DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election of (a) coating as the catalyst location, and (b) bead as the form of activated carbon in the reply filed on 6/29/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 15 and 20-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse as noted above.
Response to Arguments
Applicant's arguments filed 1/20/2026 have been fully considered but they are not persuasive.
Arguments concerning the combination of Woodson et al. and Wilson et al. were addressed in prior office actions (see Non-Final 9/17/2026).
Applicant argues that because Wilson et al. discloses filtering environmental pollutants it would not be suitable for use in removing constituents in tobacco smoke. The examiner disagrees. Cigarette smoke is a well-known environmental pollutant, and the effect would be well understood by one of ordinary skill.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Woodson et al. (US 2004/0129280) in view of Wilson et al. (US 5,827,355).
Regarding claims 1, Woodson et al. disclose a cigarette with a filter comprising activated carbon, including activated carbon beads [0041].
Although a carbon fiber composite is not disclosed, it would have been obvious to one of ordinary skill in the art at the time of invention to incorporate the carbon fiber composite molecular sieve filter such as the activated carbon of Wilson et al. Wilson et al. disclose an activated carbon structure that is activated at temperatures of 800-950 C, steam, and 0.1-0.9 atmospheres for 1-3 hours in order to burn off up to 60%. At 56% burn off the BET surface area was 1670 m2/g, with high micropore volume, a low mesopore volume and no macropores (col. 7, 1-15). Wilson go on to state:
Moreover, the mean micropore size is controllable through the activation process thus allowing for the carbon fiber composite to be tailored for adsorbing or sieving of specific gas molecules (col. 7, 36-42). Woodson et al. also state that their desired activated carbon, “…can have different porosity characteristics, such as a selected pore size and total pore volume.” [0041].
Wilson et al. go on to report that a composite can be produced with a mean pore width of 5-10 angstroms (col. 7, 26-30). It would have been obvious to one of ordinary skill in the art at the time of invention to use the micropore activated carbon of Wilson to reduce harmful emissions from cigarette smoke. Furthermore, Wilson et al. disclose that such a filter that can be used to remove organic vapors, SOx and NOx from gasses and improve air quality, which are also harmful gases present in cigarette smoke (col. 6, 43-60; claim 1).
Woodson et al. does not disclose that a cigarette is used with the method steps of heating or lighting the cigarette to form smoke, drawing the smoke through the cigarette, and that the activated carbon sorbent removing nitric oxide from the mainstream smoke. However, the process steps for smoking a cigarette (i.e. lighting and drawing smoke through the cigarette to form mainstream smoke that then travels through the cigarette filter) is notoriously well known in the art as well as notoriously well known by ordinary consumers.
Regarding claims 2 and 3, because the material of Wilson et al. is the same as that which is claimed (i.e. activated carbon having a pore size from 5-10 Angstrom and BET surface are from 1000 to 2000 m2/g) the interaction with mainstream smoke including sorption and catalysis of nitric oxide would be inherent. In addition, Wilson et al. expressly disclose the sorptive capacity of the activated carbon material (col. 1, 40-48).
Regarding claim 4, Wilson et al. do not expressly disclose that a majority of the pores are within 5-10 Angstrom in size. However, Wilson et al. disclose:
It has a very high Surface area, a narrow micropore distribution centered around mean pore widths of 5-10 A, a high micropore Volume, low mesopore Volume, a high gas adsorption/desorption rate, and a per meable macrostructure through which fluid can easily pass. (col. 7, 26-32)
It would have been obvious to one of ordinary skill in the art at the time of invention, that the disclosure of a “narrow micropore distribution centered around mean pore widths of 5-10 A,” would make it obvious that a majority of pores were “about 5 A to about 10 A”.
Alternatively, the disclosure of the intention to center mean pore widths of 5-10 A combined with the teaching that, “the mean micropore size is controllable through the activation process thus allowing for the carbon fiber composite to be tailored for adsorption or sieving of specific gas molecules (col 7, 36-40) indicates that pore size is a result effective variable. It would have been obvious to one of ordinary skill in the art at the time of invention to optimize the activation process to produce a majority of pores in the 5-10 Angstrom range because this range is disclosed as the effective size range for a high gas adsorption rate.
Regarding claim 17, Woodson et al. disclose that the carbon is in the form of beads. It would have been obvious to one of ordinary skill in the art at the time of invention/filing to form the monolith of Wilson et al. in the form of beads to replace the beads of Woodson et al. It is well known in the art to replace one type of activated carbon with another to achieve the benefits of the improved absorbent (e.g. controllable pore distribution disclosed by Wilson et al.).
Claims 18-19 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Woodson et al. (US 2004/0129280) in view of Wilson et al. (US 5,827,355) as applied to claim 17 above, and in further view of Paine, III et al. US 20030154993 A1).
Regarding claim 18-19, Woodson et al. does not disclose the diameter of activated carbon beads. However, Paine, III et al. discloses that beads can have a diameter of .2 to .7 mm (claim 2), with a specific example of 0.35 mm [0072]. It would have been obvious to one of ordinary skill in the art at the time of invention to use this size diameter spherical activated carbon in smoking articles because Paine, III et al. disclose that, “excellent gas phase removal efficiency is achieved” with 0.35 mm diameter beaded carbon [0072], and it would motivate one of ordinary skill to use this diameter in the cigarette of Woodson et al.
Claims 14 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Woodson et al. (US 2004/0129280) in view of Wilson et al. (US 5,827,355) as applied to claim 1 above, and in further view of Keith II, et al. (US 3,355,317).
Woodsone et al. and Wilson et al. do not disclose using catalysts coated on the activated carbon. However, Keith II, et al. disclose a cigarette with a cigarette filter that contains activated carbon impregnated with (i.e. at least a portion is coated) a metal. Keith III, et al. further state,
Carbon impregnated with an oxide of copper, cobalt or zinc, either with or without an additional metal oxide selected from the group consisting of cobalt, copper, zinc, iron, molybdenum and silver, is highly effective in the removal of Hydrogen cyanide and hydrogen sulfide from tobacco smoke streams. Other noxious gaseous components of cigarette smoke are also removed by carbon impregnated according to this invention without materially affecting the taste or the draw resistance of the cigarette. (col. 4, 27-36)
It would have been obvious to one of ordinary skill in the art at the time of invention to coat or impregnate the activated carbon of Woodson et al. and Wilson et al. with the metals of Keith III, et al. to further remove noxious gases such as hydrogen cyanide and hydrogen sulfide as taught by Keith III, et al.
Allowable Subject Matter
Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Furthermore, claim 16 is also subject to a double patenting rejection which must be addressed before the claim can be allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not measure pore volumes using the D-R method. The prior art does not teach a correlation between pores measured via the D-R method to the measurement methods used in the prior art. Therefore, the prior art does not teach the claimed invention.
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 MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached on Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Michael J Felton/
Examiner, Art Unit 1791
