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
This office action is in response to Applicant’s amendment filed on 09 March 2026:
Claims 2, 3, 5, 7-12 and 17-21 are pending
Claims 7-12 are withdrawn
Claims 1, 4, 6 and 13-16 are cancelled
Claims 17-21 are new
Response to Arguments
Applicant's arguments filed 20 February 2026 have been fully considered but they are not persuasive.
On Pages 5-6 of Applicant’s Remarks, Applicant argues that Jung already possesses a long-lasting, preserved taste and would therefore not be modified to have a redundant or superfluous advantage such as preserving aroma and taste as disclosed by Lamblin’s tobacco sheet.
Examiner notes that Jung was explicitly modified with Lamblin for the specific ranges of tobacco and other flavoring extracts in which Jung was silent on, wherein the modification is the substitution of a tobacco sheet with another equivalent tobacco sheet for a cigarette article.
The fact that Lamblin can provide the same advantages as the sheet disclosed by Jung actually provides strong support that one ordinarily skilled in the art would be motivated to modify Jung’s tobacco sheet to have the extracts in the ranges disclosed by Lamblin since it would yield predictable results, wherein the tobacco sheet will be capable of achieving aroma preservation and long-lasting taste which is one of the key aspects of Jung’s own tobacco sheet.
On Pages 6-7 of Applicant’s Remarks, Applicant argues that in regards to the benefit of reducing user exposure of harmful constituents that Lamblin cites for their reconstituted sheet, this is a result of the “heating device” and thus, would not be applicable to solely the sheet.
Applicant further argues that Lamblin’s sheet is directed to a wholly different operating mechanism wherein the reconstituted sheet is heated in order to generate an aerosol to impart organoleptic properties wherein Jung’s is disposed within the cooling segment for cooling aerosol. As such, the properties and composition of Lamblin’s sheet is purposely designed for a heating condition and cannot be extrapolated to a cooling condition.
Examiner notes that Lamblin discusses the reduction is due to heating of the sheet that does not reach combustion. Therefore, the benefits described in Lamblin is still applicable to the sheet as its properties lend to reduction of harmful constituents when said sheet is heated and not combusted to generate aerosols
Examiner also respectfully disagrees in regards to Applicant’s heating mechanism argument because Lamblin and Jung both discloses heat as a source of aerosol generation. Specifically, Jung states that because of heat transferred from the tobacco rod to the cooling segment, the tobacco taste is prolonged and the amount of aerosol may be increased, indicating that similar to Lamblin, the reconstituted sheet within the cooling segment is in fact heated. While the overall aerosol in Jung might be cooled down by the time it reaches the user, the overall mechanism is similar to Lamblin because the cooling segment removes heat by transferring the heat to a different material (in this case, the tobacco sheet).
Therefore, if one ordinarily skilled in the art were to apply a reconstituted plant sheet with the composition disclosed by Lamblin to a similar plant sheet disclosed by Jung, there is reasonable expectation that the modified sheet will be capable of generating aerosol and aroma due to heat since heat from the tobacco stick will be transferred to the cooling segment as disclosed by Jung.
On Pages 7-8 of Applicant’s Remarks, Applicant argues that Jung does not disclose any indication that the cooling zone suffers from any deficiency related to taste or harmful constituent production and therefore, there is no motivation to substitute Jung’s sheet with Lamblin’s reconstituted sheet to provide those advantages.
Examiner respectfully disagrees, noting that just because Jung does not disclose a deficiency that would prompt the benefits disclosed by Lamblin, that does not mean that Jung cannot appreciate the same benefits described by Lamblin. Considering that both Jung and Lamblin disclose a tobacco sheet wherein said sheet can comprise of flavoring extracts, one ordinarily skilled in the art would have a reasonable expectation that Jung will enjoy the same benefits of preserving aroma and reducing harmful constituents via heating instead of combustion as noted by Lamblin.
On Pages 7-8 of Applicant’s Remarks, Applicant argues that Examiner has not provided evidence that Jung and Lamblin’s sheets are equivalent, primarily pointing out that Jung’s sheet is used in a cooling condition whereas Lamblin is used in a heating condition.
Examiner respectfully disagrees, noting that both Jung and Lamblin reveal a tobacco sheet, wherein said sheet generates aerosols via heating. As previously stated, while the intended use of the sheet in the cooling segment disclosed by Jung is to cool down aerosol, it is stated that heat from the tobacco portion (i.e., main aerosol source), is transferred to the cooling segment which results in further aerosol being generated from the tobacco sheet.
Therefore, Lamblin and Jung’s sheets are considered equivalent as both are plant-based sheets, wherein said sheet are both disclosed to be tobacco sheets, and wherein the sheets generate aerosol via heating regardless of their intended use as a main aerosol source (i.e., is disposed for primarily heating) or as a segmentation for cooling aerosol from another source (i.e., disposed primarily for cooling).
On Page 9 of Applicant’s Remarks, Applicant argues that Jung discourages the inclusion of aerosol-generating materials and flavoring additives by pointing out how Jung states that the cooling-segment sheet is “unlike the tobacco sheet of the tobacco rod” and thus, teaches away from using Lamblin as a modification for adding aerosol-generating agents and flavoring extracts in significant amounts.
Examiner respectfully disagrees, noting that Applicant coincidentally chooses to ignore that Jung prefaces the statement with “another embodiment” and also states “may omit” which both indicate that the omission or reduction of aerosol-generating material and/or additives is a choice and not a requirement. Therefore, it is well within the ambit of one ordinarily skilled in the art to include aerosol-generating material and/or additives in the paper sheet of the cooling-segment disclosed by Jung as Jung does not explicitly teach away from adding such materials.
On Page 9 of Applicant’s Remarks, Applicant argues that Jung and Lamblin addresses different problems and proposes different solutions which would make them incompatible for modification. In particular, Applicant appears to reiterate that Jung minimizes the inclusion of aerosol-generating material/additives to focus on cooling functions, while Lamblin on the contrary includes additional aerosol-generating material/additives for preserving aroma and flavors.
As previously stated, Examiner disagrees with Applicant because Jung does not teach away from adding additives/aerosol-generating material and merely proposes an alternative embodiment where this none; Jung is merely providing options. Therefore, one ordinarily skilled in the art can reasonably substitute Jung’s sheet with one laden with additives as it will produce a similar result as Jung’s sheet, which is providing aromas to the user and increase aerosol production.
On Page 10 of Applicant’s Remarks, Applicant argues that the design and purpose of the sheets of Jung and Lamblin are different and therefore, the cooling effect in Jung’s sheet with minimal aerosol-generating materials and flavoring additives cannot reasonably be assumed to be applicable to Lamblin’s sheet.
Examiner respectfully disagrees, noting that Applicant fails to provide any evidence or further details that would support the claim that Lamblin’s sheet is incapable of being a cooling sheet. Furthermore, as previously noted, Jung merely states that one can omit additives but does not explicitly exclude them, implying that additives can be included (note that there is no verbiage in Jung that says the amount is significant or minimal).
On Pages 11-12 of Applicant’s Remarks, Applicant argues that Applicant does not need to prove criticality and once again reiterates arguments directed to showing that routine optimization is unlikely to occur for the ranges disclosed in Applicant’s claims due to how broad the ranges disclosed in Lamblin are.
Examiner emphasizes that Lamblin’s range encompasses the narrower ranges that Applicant has disclosed in the claims which are considered prima facie obvious for overlapping ranges; Applicant has not made any arguments regarding routine optimization of the ranges and therefore Applicant’s arguments directed to routine optimization is moot.
As stated in Examiner’s prior office action, Applicant has merely selected a narrower range from a list of other (broader) ranges that Applicant has disclosed within their disclosure which Examiner has shown to be obvious in terms of overlapping ranges.
It is unclear why the narrower range would serve function differently from that of the broader ranges already disclosed in Applicant’s own disclosure and if Applicant wishes to distinguish between Applicant’s own ranges, then evidence must be provided to show criticality between said disclosed ranges.
The following is a modified rejection based on the new claims.
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 2, 3, 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al (Publication No. US20210127741A1 cited in IDS filed on 23 July 2024), in view of Lamblin et al (Publication No. FR3070237A1 cited in IDS dated 23 July 2024, hereinafter referring to the provided English Translation).
Regarding Claim 2, Jung discloses a vaping (i.e., aerosol-generating) article comprising:
an aerosol-generating zone (Tobacco rod 210) (Fig. 2A; [0041]);
a zone for cooling (Cooling segment 220) the aerosol (Fig. 2A; [0041, 0051]);
said zone for cooling further comprising:
a paper in the shape of a hollow tube (Wrapper 252/254) (Fig. 2; [0041]; hollow tube shape implied as the wrapper is a sheet that wraps around a rod-shaped vape article);
and a functionalized paper (i.e., Tobacco sheet) included in the zone (210) for cooling the aerosol [0054];
said paper in the shape of a hollow tube further comprising a filtering zone (Filter segment 230/240) (Fig. 2; [0064, 0072]);
said functionalized paper further comprising:
a fibrous substrate comprising cellulose fibers [0054-0055];
Jung does not disclose that the paper in the shape of a hollow tube further comprises a fibrous substrate. However, it is well-known in the art that paper is a fibrous substrate.
Jung also does not disclose the functionalized paper further comprising the following:
between 25% and 30% of tobacco, eucalyptus, or star anise extract extract by weight of dry matter of said functionalized paper;
and between 15% and 30% of glycerin by weight of dry matter of said functionalized paper;
the functionalized paper has a grammage between 65 g/m2 and 100 g/m2.
Regarding (I-III), Lamblin, directed to a reconstituted plant sheet (i.e., paper) for use in a heating/aerosol device, discloses said sheet is formed from plant fibers (i.e., fibrous substrate) by a papermaking process (Lamblin, Pg. 7, Lines 276-277) to the following specifications:
between 12% and 45% of tobacco extract by dry matter weight (Pg. 3, Lines 98-107; overlaps with the claimed range of 25%-30%);
between 15% and 25% of glycerin by dry matter weight (Pg. 2, Lines 57-65; overlaps with the claimed range of 15%-30%);
and has a weight (i.e., grammage) between 60 g/m2 to 125 g/m2 (Pg. 3, Lines 120-122; overlaps with the claimed range or 65-100 g/m2).
The claimed ranges for the plant extract, aerosol-generating agent, and grammage overlap with the ranges disclosed by Lamblin and are therefore considered prima facie obvious (See MPEP § 2144.05.I).
Therefore, it would have been obvious to one ordinarily skilled in the art before
the effective filing date of the claimed invention, to substitute the tobacco sheet in the cooling zone with the reconstituted plant sheet/paper disclosed by Lamblin, as both are directed to a sheet/paper embedded with aerosol-generating agents, where Lamblin teaches the advantage of using an aerosol-generating agent embedded reconstituted plant sheet to allow the user to inhale tobacco aromas while significantly reducing exposure to harmful constituents (Lamblin, Pg. 4, Lines 24-25); this also involves substitution of a known fibrous paper (i.e., cellulose/tobacco) with another known fibrous paper (i.e., plant fiber) to a similar device to yield predictable results.
Regarding Claim 3, Lamblin discloses the fibrous substrate of the paper (i.e., reconstituted plant fiber sheet) in the shape of a hollow tube has a grammage of between 80 g/m2 and 180 g/m2 (Lamblin, Pg. 3, Lines 120-122; discloses an overlapping range of 20 g/m2 to 150 g/m2 and is therefore considered prima facie obvious).
Regarding Claim 5, Modified Jung further discloses the fibers of the fibrous substrate of the paper in the shape of a hollow tube of the cooling zone can be chosen from cellulose fibers (Lamblin, Pg. 6, Lines 269-270), plant fibers (Lamblin, Pg. 6, Lines 269-270), and mixtures thereof.
Regarding Claim 19, Jung further discloses that the paper in the shape of a hollow tube (i.e., wrapper) can comprise of multiple wrappers, wherein it may be a third wrapper (253) made of a PLA flavored paper ([0071-0072]; flavored paper implies that the paper may comprise of flavoring agents/additives).
Jung does not explicitly disclose that the paper/wrapper in the shape of a hollow tube comprises between 12% and 25% of plant extract by weight of dry matter of the paper in the shape of a hollow tube; and between 8% and 20% of aerosol-generating agent by weight of dry matter of the paper in the shape of a hollow tube.
However, Lamblin, directed to a reconstituted plant sheet (i.e., paper) for use in a heating/aerosol device, discloses said sheet is formed from plant fibers (i.e., fibrous substrate) by a papermaking process (Lamblin, Pg. 7, Lines 276-277) to the following specifications:
between 12% and 45% of tobacco (i.e., plant) extract by dry matter weight (Pg. 3, Lines 98-107; overlaps with the claimed range of 12%-25%);
between 15% and 25% of glycerin (i.e., aerosol-generating agent) by dry matter weight (Pg. 2, Lines 57-65; overlaps with the claimed range of 8%-25%);
Examiner notes that while Lamblin’s plant sheet is utilized as an aerosol-generating material meant to be heated to generate aerosol, this is merely the intended use of a material and the Courts have held that it is well settled that the recitation of a new intended use, for an old product, does not make a claim to that old product patentable (see MPEP § 2114).
In this regard, both Lamblin and Jung disclose a paper material, wherein said paper material can be flavored paper. Though Jung does not explicitly disclose the composition of the flavored paper, both Lamblin and Jung’s sheet a structurally similar in that they comprise of plant (i.e., tobacco) material formed into a paper, wherein said paper further comprises a flavor.
Therefore, one ordinarily skilled in the art would reasonably conclude that since Lamblin and Jung both disclose a flavored paper product, one could substitute the flavored paper wrapper disclosed by Jung with a different flavored paper such as the one disclosed by Lamblin, to predictably yield a wrapper that can physically wrap materials in a hollow tube unless evidence of the contrary is provided.
Claims 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al (Publication No. US20210127741A1 cited in IDS filed on 23 July 2024), in view of Lamblin et al (Publication No. FR3070237A1 cited in IDS dated 23 July 2024, hereinafter referring to the provided English Translation) as applied to Claims 2 and 3 above, and further in view of Cao et al (Publication No. US20200229487A1).
Regarding Claims 17 and 20, Modified Jung does not disclose the paper in the shape of a hollow tube comprises a honeycomb structure in the hollow tube.
However, Cao, directed to a smoking article, discloses a cooling section (12) comprising a paper casing (122) (i.e., hollow tube) and an inner core, wherein said core can be manufactured to have an internal honeycomb shape structure [0059-0060]. Depending on the materials used, the inner core can both efficiently absorb heat and cool materials while effectively extending the path of the gas flow to further improve the cooling effect [0068].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the paper in the shape of a hollow tube disclosed by Modified Jung to incorporate a honeycomb inner core structure as disclosed by Cao, as both are directed to a cooling segment/section of an aerosol-generating/smoking article, where Cao teaches the advantage of incorporating an inner core such as a honeycomb structure to improve the cooling effect of the cooling section [0068]; this also involves applying a known teaching of a cooling segment honeycomb inner structure disclosed by Cao, to a similar cooling segment disclosed by Modified Jung, to predictably yield a smoking article capable of cooling down aerosol and effectively absorbing heat.
Claims 18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al (Publication No. US20210127741A1 cited in IDS filed on 23 July 2024), in view of Lamblin et al (Publication No. FR3070237A1 cited in IDS dated 23 July 2024, hereinafter referring to the provided English Translation) as applied to Claims 2 and 3 above, and further in view of Lee et al (Publication No. US20220330606A1).
Regarding Claims 18-21, Modified Jung discloses that the paper in the shape of a hollow tube (i.e., wrapper) can comprise of multiple wrappers/papers [0071-0072]. Modified Jung does not disclose the functionalized paper is laminated to the paper in the shape of a hollow tube.
However, Lee, directed to an aerosol generating article, discloses a cooler (i.e., cooling segment) section of said article, arranged adjacent to an end of the tobacco filler and configured to cool aerosol (Abstract). Lee also discloses that the cooler/cooling segment can be formed from multiple paper that has been laminated together ([0050-0051]; though a functionalized paper is not disclosed, Lee refers to paper in general which broadly interpreted as any kind of paper such as a functionalized paper).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify Jung’s cooling segment papers to laminate a paper (i.e., functionalized paper) to another paper (i.e., wrapper) to form a laminated paper to form the cooling segment as disclosed by Lee, as both are directed to an aerosol-generating/smoking article, where this applies a known teaching of forming a cooling segment from laminated paper disclosed in Lee, to a similar cooling segment disclosed by Jung, to predictably result in a cooling segment comprising laminated paper and functionalized paper that is capable of cooling aerosol.
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 Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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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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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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