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 .
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to for being more than 150 words in length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 3/5/2026.
Applicants’ amendments to the drawings filed on 3-5-2026 in response to the objection to the drawings have been fully considered and are persuasive. The objection to the drawings is withdrawn.
Claims 1, and 5-7 are amended,
Claims 2-4, 10-11, 13, 18, 20, 23, and 26-28 are canceled.
Claims 1, 5-9, 12, 14-17, 19, and 21 are presently examined.
Claims 22, 24, and 25 are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 5-9, 12, 14-17, 19, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the wrapper has a level of permeability greater than about 2000 Coresta units; and wherein greater than 50% of a surface area of the wrapper has said permeability. However, it is unclear exactly what is being claimed because the claim could be interpreted to require the claimed permeability range given through the area of the perforations divided by the total area of the wrapper. The claim could also be interpreted to require the wrapper to include a wrapper section that is perforated with the claimed permeability compared to an unperforated section. The claim is therefore indefinite. For the purposes of compact prosecution, the claim is interpreted to require the wrapper to include a wrapper section that is perforated with the claimed permeability compared to an unperforated section. Claims 5-9, 12, 14-17, 19, and 21 are indefinite by dependence.
Claim 5 recites the wrapper is formed from an inherently porous material however, it is unclear what is meant by inherently porous material. No example is provided of a material that is inherently porous with a Coresta of over 2000. It is also unclear if inherently porous material is a method of manufacture that results in a product that has a coresta of over 2000 after a manufacturing process. The claim fails to clarify what is meant by inherently porous material. Therefore, inherently porous is interpreted to include the porosity of the wrapper including the inherent porosity granted by perforations through the wrapper.
Regarding Claim 7, in the present instance, claim 7 recites the broad recitation 2000 Coresta Units to about 20000 Coresta units, and the claim also recites 2000 Coresta Units to about 10000 Coresta Units which is a narrower statement of the range/limitation, the claim also recites 2000 Coresta units to about 5000 Coresta units, which is a narrower statement of the range/limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding Claim 19, in the present instance, claim 19 recites the broad recitation a ventilation level of between about 10% and about 60%, and the claim also recites between 40% and 60% ventilation, which is a narrower statement of the range/limitation, and the claim also recites between about 15% and 45% ventilation, which is a narrower statement of the range/limitation.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of 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 basi7s 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, 5-8, 12, 15, 17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (WO2019096983A1) in view of Adams (US5692526A).
Regarding Claim 1, Hepworth teaches an article for insertion into an apparatus for heating an aerosol generating material (see FIG 1) to aerosolize at least one component of the aerosol generating material (106), the article comprising:
an aerosol generating material (see FIG 1, part 106), and
a downstream portion downstream of the aerosol generating material, the downstream portion comprising at least one ventilation area (path A and C are air intake flow paths illustrated in FIG 3), wherein
a first air flow path is defined in which air drawn through the article at its downstream end passes through the aerosol generating material (e.g., see path A in FIG 4), and
a second air flow path is defined in which air drawn through the article at its downstream end is drawn into the article through the at least one ventilation area in the downstream portion (path C in FIG 4), and the resistance to draw of the second air flow path is greater than the resistance to draw of the first air flow path. (see page 18 and 19, second airflow control arrangement 404 and the restrictor mechanism 404a can vary the size of the second air inlet 402 to vary the airflow allowed through the second air inlet 402 (last paragraph of page 18). This allows for the control of the draw resistance of the consumable 102 (see second to last paragraph of page 19). Therefore, it would be obvious to a person of ordinary skill in the art to modify the airflow path and arrangement of the first and second airflow paths as explained above such that the resistance to draw of the second air flow path is greater than the resistance to draw of the first air path, with a reasonable expectation of success.
Additionally, Hepworth discloses the aerosol generating material is in a consumable article in the form of an elongate rod with the aerosolizable material provided in a segment and that a plurality of ventilation holes are arranged in two circumferential rows in the undisclosed material that is illustrated as enclosing the elongate consumable rod in the cooling portion (page 9 first new paragraph, see also FIG 2). Hepworth also illustrates the wrapped rod being inserted into the heater device as illustrated in FIG 4.
Hepworth is silent to aerosol generating material in a consumable article (a cigarette) having a wrapper, and a suitable permeability for a wrapper for use.
However, Adams teaches a similar aerosol generating material in a consumable article and teaches a wrapper (see column 16 lines 40-42) for a cigarette for a similar electronic smoking system and teaches the paper wrapper of Adams is advantageous because it has a level of permeability greater than about 2000 Coresta units. Specifically, Adams teaches the wrapper has a level of permeability of 500 to 2500 Coresta, see column 14 line 2-4, and teaches this permeability of the wrapper is adjusted using different perforation densities and this perforation density is adjustable in order to achieve desired smoking characteristics such as a desirable resistance to draw (see Column 13 lines 56-67 and column 14 lines 1-3).
Therefore, a person of ordinary skill in the art, before the filing date of the claimed invention, would have been motivated to modify the smoking article of Hepworth with the wrapper of Adams because (1) Adams teaches known suitable wrappers with suitable levels of permeabilities, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. And (2) because the level of permeability can be adjusted in order to achieve desired smoking characteristics such as resistance to draw.
Additionally, as Hepworth teaches a consumable tobacco rod which is known in the art to have a wrapper and Adams teaches wrappers which are known to be wrapped around consumable tobacco rods. It would have been obvious for a person of ordinary skill in the art would to have substituted a wrapper which is known in the art to be wrapped around consumable rods as shown by Adams; to be wrapped around the rod of Hepworth and the results of this substitution would have been predictable. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B. because, for example, Adams teaches this is beneficial because the level of permeability can be adjusted in order to achieve desired smoking characteristics such as resistance to draw. (column 14 line 2-4)
Additionally, Hepworth teaches the wrapper has a level of permeability e.g., part 108, but is silent to a suitable permeability of the wrapper in Coresta units. Hepworth therefore, fails to explicitly recite the wrapper has a level of permeability greater than about 2000 Coresta units; and wherein greater than 50% of a surface area of the wrapper has said permeability. Thus, a person of ordinary skill in the art would have been motivated to search the related art for suitable permeabilities of wrappers in similar devices.
Adams teaches a suitable wrapper for a smoking device should have a level of permeability of 500 to 2500 Coresta (column 14 line 2, permeability across the entire wrapper) to achieve a desirable resistance to draw.
Adams fails to explicitly disclose that greater than 50% of a surface area of the wrapper has said permeability, however, as set forth above in the 35 USC 112b rejection, this limitation is interpreted to require the wrapper to include a wrapper section that is perforated with the claimed permeability compared to an unperforated section
Adams teaches that this permeability of 500 to 2500 (column 14 line 2-4) leads to an improved tobacco flavor response and aerosol formation (column 13 lines 60-61), and additionally teaches that perforations can be placed in the outer wrap in the perforated section at a perforation rate of 1 hole per 1-2 square millimeters with a hole diameter of between 0.4mm and 0.7mm to achieve the suitable permeability of 500-2500 Coresta in the wrapper that is perforated with the claimed permeability compared to an unperforated section in order to improve tobacco flavor and aerosol formation (column 13 line 63- column 14 line 2).
Regarding Claim 5, modified Hepworth teaches the claim limitations set forth above. Additionally, Adams teaches the wrapper is formed from an inherently porous material (see column 14 lines 1-4, the outerwrap can be perforated, a perforated wrapper is a porous material, the claim limitation requires the wrapper be formed from an inherently porous material, the wrapper of Adams possesses the same properties as the claimed wrapper and therefore meets the claimed limitation).
Regarding Claim 6, modified Hepworth teaches the claim limitations as set forth above. Additionally, Adams teaches the wrapper is provided with perforations (see column 14 lines 1-4).
Regarding Claim 7, modified Hepworth teaches the claim limitations as set forth above. Additionally, Adams teaches the wrapper has a level of permeability from about 2000 Coresta Units to about 5000 Coresta Units.
Specifically, Adams teaches the wrapper has a level of permeability of 500 to 2500 Coresta, see column 14 line 2, which falls within the claimed range.
Regarding Claim 8, modified Hepworth teaches the claim limitations as set forth above.
Hepworth fails to explicitly disclose that the downstream portion comprises a hollow tubular element,
However, Adams teaches the downstream portion comprises a hollow tubular element (96, see column 8 lines 10-14), and teaches this free flow filter is preferable because it transmits air with very little pressure drop (column 8, lines 10-11). Therefore, it would be obvious to a person of ordinary skill in the art to modify the downstream portion of Hepworth with the hollow tubular portion of Adams to include a hollow tubular portion so that the downstream portion of Hepworth can transmit air with very little pressure drop.
Regarding Claim 12, modified Hepworth teaches the claim limitations as set forth above. However, Hepworth fails to teach (1) a hollow tubular element and (2) that the hollow tubular element comprises a first hollow tubular element, and wherein the downstream portion comprises a second hollow tubular element downstream of the first hollow tubular element.
Regarding (1) as set forth above, Adams teaches a hollow tubular segment (free flow filter 96, see column 8 lines 10-14).
Regarding (2) Adams fails to explicitly disclose the hollow tubular element 96 comprises a first hollow tubular element, and wherein the downstream portion comprises a second hollow tubular element downstream of the first hollow tubular element.
However, it would be obvious to a person of ordinary skill in the art to duplicate the hollow tubular element of Adams to include a second hollow tubular element downstream of the first hollow tubular element, The mere duplication of parts, without any new or unexpected results, is obvious to one of ordinary skill in the art. See MPEP § 2144.04 VI B.
Therefore, it would be obvious to a person of ordinary skill in the art to modify the downstream portion of Hepworth with the hollow tubular portion of Adams to include the duplicated first and second hollow tubular portion so that the downstream portion of Hepworth can transmit air with very little pressure drop.
Regarding Claim 15, modified Hepworth teaches the claim limitations as set forth above. Additionally, Hepworth teaches the downstream portion comprises a body of material downstream of the ventilation area (see FIG 2). However, Hepworth fails to explicitly disclose the body of material is cylindrical. However, it would be obvious to change the shape of the body of material to a cylindrical shape. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding Claim 17, modified Hepworth teaches the claim limitations as set forth above. However, Hepworth fails to teach (1) a hollow tubular element and (2) that the hollow tubular element comprises a first hollow tubular element, and wherein the downstream portion comprises a second hollow tubular element downstream of the first hollow tubular element. However,
Regarding (1) as set forth above, Adams teaches a hollow tubular (FIG 4 illustrates tubular) segment (free flow filter 96, see column 8 lines 10-14).
Regarding (2) Adams fails to explicitly disclose the hollow tubular element 96 comprises a first hollow tubular element, and wherein the downstream portion comprises a second hollow tubular element downstream of the first hollow tubular element.
However, it would be obvious to a person of ordinary skill in the art to duplicate the hollow tubular element 96 of Adams to include a second hollow tubular element (e.g., 96b) downstream of the first hollow tubular element (e.g., 96a), The mere duplication of parts, without any new or unexpected results, is obvious to one of ordinary skill in the art. See MPEP § 2144.04 VI B.
Therefore, it would be obvious to a person of ordinary skill in the art to modify the downstream portion of Hepworth with the hollow tubular portion of Adams to include the duplicated first and second hollow tubular portion so that the downstream portion of Hepworth can transmit air with very little pressure drop.
Adams additionally teaches a body of material 98 (See FIG 2) downstream of the hollow tubular element 96. It would be obvious for a person of ordinary skill in the art to duplicate the combination of the hollow tubular element 96 followed by the cylindrical body 98 such that it is followed by a second hollow tubular element 96 and a second cylindrical body 98 (see annotated and modified FIG 2 below modified only to illustrate the duplication of parts 96 and 98) because the mere duplication of parts, without any new or unexpected results, is obvious to one of ordinary skill in the art. See MPEP § 2144.04 VI B. This modification would include a cylindrical body of material between the first hollow tubular element and the second hollow tubular element, and would allow modified Hepworth to transmit air with very little pressure drop because the filter 98 is a low efficiency filter configured to be used with the free flow filter 96 to allow air to pass with very little pressure drop. (see column 8 lines 7-18)
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Regarding Claim 19, modified Hepworth teaches the claim limitations as set forth above. Additionally, Hepworth teaches a ventilation level of between about 10% and about 60%, or between 40% and 60% ventilation, or between about 15% and 45% ventilation, e.g., as shown in the device in FIG 4 and table of FIG 6, Hepworth teaches the ventilation level can be adjusted to air inlet 108 with the path C which allows air through opening 402 by adjusting 404a and 404b, which can adjust resistance to draw. This allows an adjustment from any amount of ventilation, see table of FIG 6., e.g., if the air inlet is 40% closed the consumable would get 40% ventilation, if the air inlet was all the way open the consumable would get 25% ventilation air or if it was 90% closed the consumable would get 80% ventilation air intake as shown in the table of FIG 6. Therefore, Hepworth teaches the ventilation level can for the device can range from 25-80% ventilation which overlaps with the claimed ranges. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
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Regarding Claim 21, modified Hepworth teaches the claim limitations as set forth above. Additionally, Hepworth teaches the apparatus comprises a non-combustible aerosol provision device (see FIG 1 part 106), the remaining features of the claim are intended use are non-limiting.
Regarding the intended use limitations: the article is configured such that when the article is inserted into the non-combustible aerosol provision device, the minimum distance between a heater of the non-combustible aerosol provision device and the hollow tubular element of the article is at least about 3 mm.
This limitation has been interpreted as an intended use. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim MPEP 2114(II) (emphasis added for clarity). Here, since modified Hepworth teaches all the structural limitations of the article, it is capable of being inserted into the non-combustible aerosol provision device the minimum distance between a heater of the non-combustible aerosol provision device and the hollow tubular element of the article is at least about 3 mm.
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (WO2019096983A1) and Adams (US5692526A) as set forth above in claim 8, and further in view of Kobal (US20180271140A1).
Regarding Claim 9, modified Hepworth teaches the claim limitations as set forth above.
Additionally, Adams teaches the hollow tubular element and teaches the hollow tubular element has walls (See FIG 2) as set forth above, but fails to explicitly disclose the hollow tubular element comprises a wall comprising an aerosol generating material
However, Kobal teaches a similar aerosol generating device with a hollow tubular element and teaches that the hollow tubular element comprises a wall comprising an aerosol generating material (e.g., Kobal teaches the hollow tubular element includes a coating on the inside surface [0114] that as air flows through the hollow section of the tube, portions of the additive material become entrained in the air flow, the additive material includes flavor [0116]). Kobal teaches the flavoring of the airflow of the tobacco product enhances the enjoyment of the product. [0026]-[0027].
Therefore it would be obvious to a person of ordinary skill in the art to modify the wall of the hollow tubular element of modified Hepworth to include a flavoring coating on the inside surface that as air flows through the hollow section of the tube, portions of the additive material become entrained in the air flow so that the flavoring of the airflow of the device enhances the enjoyment of the product by the user as taught by Kobal.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (WO2019096983A1) in view of Adams (US5692526A) as applied to claims 8 and 15, respectively, above, and in view of Caprini (US20180343918A1).
Regarding Claim 14, modified Hepworth teaches the claim limitations as set forth above. Hepworth teaches the two hollow tubular elements as set forth above.
However, Hepworth is silent to suitable materials for the two hollow tubular elements.
Caprini teaches filter segments are wrapped in a wrapping material such as paper [0002], thus forming a paper tube.
It would be obvious to modify the hollow tubular elements of Hepworth to be made with paper like the device of Caprini because both Hepworth and Caprini are directed to smoking articles with hollow tubular elements such as filters. Hepworth is silent in regards to suitable materials for use, and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable materials for use in a filter. Caprini teaches known materials for using in a filter and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. Therefore, it would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention that Hepworth modified by Caprini teaches the first and/ or second hollow tubular element is formed as a paper tube.
Regarding Claim 16, Hepworth teaches the claim limitations as set forth above. Additionally, Hepworth teaches the filter is a cylindrical body as explained above in claim 15 but is silent to the filter including filamentary tow.
However, Caprini teaches the filter, which is a cylindrical body (or paper tube around the filter [0002]) as explained above, comprises cellulose acetate tow [0009], fibers of tow [0032].
It would be obvious to modify the filter of Hepworth to include tow like the device of Caprini because both Hepworth and Caprini are directed to smoking articles with filters. Hepworth is silent in regards to suitable materials for use, and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable materials for use in a filter. Caprini teaches known materials for using in a filter and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. Therefore, it would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention that Hepworth modified by Caprini teaches the cylindrical body of material comprises filamentary tow.
Response to Arguments
Applicant’s arguments, see Applicant Remarks and claim amendments, filed 3/5/2026, with respect to the rejection of the claims under 35 USC 103 has been fully considered, but they are not persuasive.
Applicant argues on page 10:
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This argument is not found persuasive because the claims do not require an unmodified wrapper, a wrapper without perforations, or a non-regionally modified wrapper. (e.g., the claim language does not exclude perforations).
Applicant argues in view of the presently amended claim 1 on page 9 of the Remarks/Arguments:
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This is not found persuasive because Claim 1 is rejected by Hepworth in view of Adams. As set forth above Adams teaches that the wrapper of Hepworth should have a suitable permeability of from 500 to 2500 Coresta units to achieve suitable resistance to draw (column 14 lines 2-4) which overlaps with the claimed range of greater than 2000 Coresta units. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Claim 1 recites the wrapper has a level of permeability greater than about 2000 Coresta units; and wherein greater than 50% of a surface area of the wrapper has said permeability. As set forth above in the 35 USC 112b rejection it is unclear exactly what is being claimed. For the purposes of compact prosecution, the claim is interpreted to require the wrapper to include a wrapper section that is perforated with the claimed permeability compared to an unperforated section which is met by Adams as set forth above in the rejection of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755
Prosecution Insights