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 .
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 4-08-2026.
Claims 1, 2, and 12-16 are amended.
Claims 1-2, and 4-17 are presently examined and rejected with this office action.
Claim 3 is canceled, claims 18-23 are withdrawn.
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.
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 1-2, 4-14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Xia (CN109892707A), English machine translation relied upon in view of Lisan (US20160106147A1), Besso (US20180271143A1), and Uthurry (US20220015414A1).
Regarding Claim 1, Xia teaches an article for use as or as part of a non-combustible aerosol provision system (See FIG 1 labeled as claim 1 mapping )
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and [0084]), the article comprising:
an aerosol generating material comprising at least one aerosol forming material ([0084], cigarette core segment element 10);
a first hollow tubular body (hollow part 20 [0084]) disposed downstream of the aerosol generating material ((10), [0084], see also annotated FIG 1 below),
the first hollow tubular body (20) comprising a wall thickness greater than about 0.5mm ([0108], wall thickness of 2.16 mm, which is greater than 0.5mm);
a second hollow tubular body (40/41, [0084]) comprising a wall thickness greater than about 0.5mm
(the hollow tube wall thickness of tubular body 40/41 is 0.3-1.2 mm, [0013] and [0051], which overlaps with the claimed range, greater than about 0.5 mm); 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)
and
a cylindrical body (filter element 30, [0084]) disposed between the first hollow tubular body (20) and the second hollow tubular body (40), and
Xia teaches a first hollow tubular body as set forth above but fails to explicitly disclose the first tubular body having an average density between about 0.25 g/ cc and about 0.75g/cc. Xia is silent to suitable densities of hollow tubular bodies for smoking articles.
However, Lisan teaches a similar aerosol provisioning system with similar hollow tubular bodies for use and teaches suitable wall densities for the hollow tubular body ([0028]) are preferably from 0.25 to 0.41 g/cc [0028] which overlaps with the claimed range of in a range of 0.2-0.6 g/cc, and further teaches that this suitable wall density of the filter has been found to give satisfactory hardness and end appearance (structural and/or shape stability) [0033], and necessary for good shape definition [0072].
It would be obvious for a person of ordinary skill in the art before the filing date of the claimed invention, to modify the hollow tube of Xia to have a hollow tubular body density as taught by Lisan in order to give the hollow tubular element a suitable wall density of the filter as taught by Lisan which has been found to give satisfactory hardness and end appearance (structural and/or shape stability) [0033], and necessary for good shape definition [0072].
Xia teaches external air flows into the device through the primary intake but fails to explicitly disclose at least one ventilation area arranged to allow external air to flow into the article.
Besso teaches smoking articles with ventilation areas and teaches perforations should be provided in a ventilation area in smoking articles in order to produce a desired level of resistance to draw (RTD) [0048], which allows external air to flow into the article.
Thus, it would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the smoking article of Xia with a ventilation area as taught by Besso in order to produce a desired level of resistance to draw in the article.
Additionally, Besso teaches at least one ventilation area is arranged to provide external air into the first hollow tubular body [0013]. Besso teaches a ventilation zone should be included in the filter at a downstream location to be combined with the tubular elements and flow restrictor so that ambient air can be drawn into the filter portion when the consumer puffs on the smoking article [0013]-[0015] in order to reduce tar and CO to the consumer [0015]), and wherein
Besso teaches ventilation as set forth above however Besso fails to explicitly disclose specific suitable levels of ventilation and therefore fails to explicitly disclose the level of ventilation provided by the at least one ventilation area is within the range of 40% to 70%.
However Uthurry teaches a similar smoking article with hollow tubular members including ventilation zones and teaches suitable ventilation should be at least about 30% ventilation to about 60% ventilation [0083] which overlaps with the claimed range of from about 40% to about 70%. 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).
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to optimize the ventilation zone of modified Xia to have a suitable ventilation of from about 30% ventilation to about 60% ventilation as taught by Uthurry, because both modified Xia and Uthurry are drawn to smoking articles with hollow tubular elements with ventilation zones, modified Xia is silent in regards to suitable ventilation for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable ventilation for a similar smoking article. Uthurry teaches known ventilation ranges for a similar smoking article, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 2, modified Xia teaches an article for use as or as part of a non-combustible aerosol provision system (see annotated FIG 1 below labeled claim 2 mapping), the article comprising:
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an aerosol generating material comprising at least one aerosol forming material ([0084], cigarette core segment element 10); and
a hollow tubular member (20, see [0084] and FIG 1) formed from cellulosic material (hollow paper tube, paper is cellulosic material [0017]) and disposed immediately downstream of the aerosol generating material; wherein,
the length of the hollow tubular member is between about 5mm and about 18mm (15mm, see [0108])
a first hollow tubular body (40/41) disposed downstream of the hollow tubular member (see also [0084] and FIG 1 above).
Xia teaches a first hollow tubular body as set forth above but fails to explicitly disclose the first tubular body having an average density between about 0.25 g/ cc and about 0.75g/cc. Xia is silent to suitable densities of hollow tubular bodies for smoking articles.
However, Lisan teaches a similar aerosol provisioning system with similar hollow tubular bodies for use and teaches suitable densities for the hollow tubular body ([0007]) are preferably from 0.25 to 0.41 g/cc [0008] which overlaps with the claimed range of in a range of 0.2-0.6 g/cc, and further teaches that this suitable wall density of the filter has been found to give satisfactory hardness and end appearance (structural and/or shape stability) [0033], and necessary for good shape definition [0072].
It would be obvious for a person of ordinary skill in the art before the filing date of the claimed invention, to modify the hollow tube of Xia to have a hollow tubular body density as taught by Lisan in order to give the hollow tubular element a suitable wall density of the filter as taught by Lisan which has been found to give satisfactory hardness and end appearance (structural and/or shape stability) [0033], and necessary for good shape definition [0072].
Xia teaches external air flows into the device through the primary intake but fails to explicitly disclose at least one ventilation area arranged to allow external air to flow into the article
Besso teaches smoking articles with ventilation areas and teaches perforations should be provided in a ventilation area in smoking articles in order to produce a desired level of resistance to draw (RTD) [0048], which allows external air to flow into the article.
Thus it would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the smoking article of Xia with a ventilation area as taught by Besso in order to produce a desired level of resistance to draw in the article.
Additionally, Besso teaches at least one ventilation area is arranged to provide external air into the first hollow tubular body [0013]. Besso teaches a ventilation zone should be included in the filter at a downstream location to be combined with the tubular elements and flow restrictor so that ambient air can be drawn into the filter portion when the consumer puffs on the smoking article [0013]-[0015] in order to reduce tar and CO to the consumer [0015]), and wherein
Besso teaches ventilation as set forth above however Besso fails to explicitly disclose specific suitable levels of ventilation and therefore fails to explicitly disclose the level of ventilation provided by the at least one ventilation area is within the range of 40% to 70%.
However Uthurry teaches a similar smoking article with hollow tubular members including ventilation zones and teaches suitable ventilation should be at least about 30% ventilation to about 60% ventilation [0083] which overlaps with the claimed range of from about 40% to about 70%.
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to optimize the ventilation zone of modified Xia to have a suitable ventilation of from about 30% ventilation to about 60% ventilation as taught by Uthurry, because both modified Xia and Uthurry are drawn to smoking articles with hollow tubular elements with ventilation zones, modified Xia is silent in regards to suitable ventilation for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable ventilation for a similar smoking article. Uthurry teaches known ventilation ranges for a similar smoking article, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 4, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the first hollow tubular body comprises a wall thickness of greater than about 0.5 mm. Specifically, Xia teaches the suitable wall thickness of the hollow tube is 0.3 to 1.2 mm [0013], which overlaps with the claimed range. 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).
Regarding Claim 5, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the article further comprises first hollow body (40) having a wall thickness of greater than about 0.5 mm. Specifically, Xia teaches the suitable wall thickness of the hollow tube is 0.3 to 1.2 mm [0013], which overlaps with the claimed range. 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).
It would be obvious to modify Xia and duplicate the first hollow body (40, see annotated FIG 1 above for claim 2 mapping) of Xia such that the mouth end is made up of a first and a second hollow body and the second hollow body having a thickness greater than about 0.5 mm like the first hollow body, because Xia teaches the hollow body provide a means for reducing the smoke temperature and avoid burns to the users mouth due to excessive smoke temperature [0025], thus it would be obvious apply the modification of duplicating the bodies to further reduce the smoke temperature and avoid burns. The mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.04 VI B.
Xia also teach a second hollow tubular body having a wall thickness of greater than about 0.5 mm, Specifically, Xia teaches the suitable wall thickness of the hollow tube is 0.3 to 1.2 mm [0013], which overlaps with the claimed range.
Regarding Claim 6, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the article further comprises a cylindrical body disposed between the first hollow tubular body and the second hollow tubular body.
Specifically, although Xia does not explicitly disclose the cylindrical body (30) between the duplicate hollow parts as set forth in claim 5, it would be obvious to rearrange the two hollow parts and modify Xia to rearrange the cylindrical body 30 in between the duplicated hollow parts (40), because Xia teaches the hollow end portions provide a means for reducing the smoke temperature and avoid burns to the users mouth due to excessive smoke temperature [0025], and it would be obvious for a person of ordinary skill in the art to be motivated to make this modification to Xia, because by duplicating the hollow part 40, the temperature would be further reduced thereby accomplishing the intent of the invention, and thereby meeting the claim limitation: the article further comprises a cylindrical body disposed between the first hollow tubular body and the second hollow tubular body. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding Claim 7, modified Xia teaches the claim limitations as set forth above. Additionally, (as similarly explained in the rejection of claim 6, although Xia does not explicitly disclose the cylindrical body (30) between the duplicate hollow parts as set forth in claim 5, it would be obvious to rearrange the two duplicate hollow parts and modify Xia to rearrange the cylindrical body 30 in between the duplicated hollow parts (40), because Xia teaches the hollow end portions provide a means for reducing the smoke temperature and avoid burns to the users mouth due to excessive smoke temperature [0025], and it would be obvious for a person of ordinary skill in the art to be motivated to make this modification to Xia, because by duplicating the hollow part 40, the temperature would be further reduced thereby accomplishing the intent of the invention, and thereby meeting the claim limitation: the article further comprises a cylindrical body disposed between the first hollow tubular body and the second hollow tubular body. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C. Thus, via this obvious modification Xia teaches the cylindrical body is positioned immediately adjacent the first hollow tubular body and the second hollow tubular body.
Regarding Claim 8, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the cylindrical body is substantially continuous (See FIG 1, the cylindrical body (filter element 30) an acetate fiber filter rod is understood by an artisan to be a continuous filter [0143], e.g., the space occupied by filter element 30 is continuously filter element 30.
Regarding Claim 9, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches a second hollow tubular body (20) as set forth above that follows the aerosol generating material. It would be obvious to a person of ordinary skill in the art to duplicate the second hollow tubular body (20) of Xia which is disposed immediately downstream of the aerosol generating material (see FIG 1) with another hollow tubular body defined hereinafter as a hollow tubular member to be located between the aerosol generating material and the second hollow tubular body (20) such that the duplicate hollow tubular member is disposed immediately downstream of the aerosol generating material. 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.
Regarding Claim 10, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the length of the hollow tubular member (duplicate of (20), see rejection of claim 9) is between about 5mm and about 18mm. Xia teaches the length of the hollow tubular member (20) is 15 mm which falls in the claimed range. (see e.g., [0108])
Regarding Claim 11, modified Xia teaches the claim limitations as set forth above. However, Xia fails to explicitly disclose the second tubular body has an average density between about 0.25 g/ cc and about 0.75g/cc. Xia is silent to suitable densities of any portion of the smoking article.
Lisan teaches a similar aerosol provisioning system with similar hollow tubular bodies for use and teaches suitable densities for hollow tubular bodies ([0007]) are preferably from 0.25 to 0.41 g/cc [0008] which overlaps with the claimed range of in a range of 0.25-0.75 g/cc.
It would be obvious for a person of ordinary skill in the art before the filing date of the claimed invention, to modify the second tubular body of Xia to have a hollow tubular body density of from 0.25 g/cc to 0.41 g/cc because both Xia and Lisan are drawn to smoking articles with hollow tubular members, Xia is silent in regards to suitable densities of hollow tubular members for use in smoking devices and one of ordinary skill in the art would be motivate to look to a similar reference to find suitable tubular densities for a similar smoking article. Lisan teaches known densities for a similar tube and these merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 12, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the first hollow tubular body is formed from paper (hollow paper tube (see [0013] and [0017]).
Regarding Claim 13, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the second hollow tubular body is formed from paper (see [0013] and [0017], Xia teaches hollow tubes taught are made from paper).
Regarding Claim 14, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the hollow tubular member is formed from paper or filamentary tow (see [0013] and [0017], Xia teaches the hollow tubes taught are made from paper).
Regarding Claim 17, modified Xia teaches the claim limitations as set forth above. Additionally, Xia teaches the first hollow tubular body and/or the second hollow tubular body comprise a wall thickness between 0.5 mm and 2.5 mm. (the hollow tube wall thickness is 0.3-1.2 mm, [0013], which overlaps with the claimed range). 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 15 is rejected under 35 U.S.C. 103 as being unpatentable over Xia (CN109892707A), English machine translation relied, Lisan (US20160106147A1), Besso (US20180271143A1), and Uthurry (US20220015414A1) as applied to claim 1 above, and further in view of Carpenter (US20110271968A1).
Regarding Claim 15, modified Xia teaches the claim limitations as set forth above. However, Xia is silent to the pressure drop across the cylindrical body.
However, Carpenter teaches a similar smoking article with similar cylindrical body hollow sections and teaches a suitable pressure drop for the cylindrical body for use. Specifically Carpenter teaches an 8 mm hollow body with a pressure drop of 15 mm water (WG), [0017], which calculates to about 1.88mmWG/mm. Therefore, Carpenter teaches the pressure drop across the cylindrical body is between 0.3 and 5mmWG per mm of length of the cylindrical body, or between 0.5mmWG and 2mmWG per mm of length of the cylindrical body, or between 1.5 and 2mmWG/mm of length of the cylindrical body because Carpenters example 1.88mmWG/mm falls within these claimed ranges.
Therefore, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the smoking device of Xia to have the pressure drop as taught by Carpenter, because both Xia and Carpenter are directed to smoking articles with hollow tube members, Xia is silent to suitable pressure drops for the hollow tube members for use, and one of ordinary skill in the art would have been motivated to look to a similar reference to find suitable pressure drops for a similar smoking article. Carpenter teaches known pressure drops for a similar hollow tube, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Xia (CN109892707A), English machine translation relied, Lisan (US20160106147A1), Besso (US20180271143A1), and Uthurry (US20220015414A1) as applied to claim 1 above, and further in view of Carpenter (US20110271968A1) and Minzoni (TW201703660A1) English machine translation relied upon.
Regarding Claim 16, modified Xia teaches the claim limitations as set forth above. However, Xia is silent to the pressure drop across the cylindrical body.
However, Carpenter teaches a similar smoking article with similar cylindrical body hollow sections and teaches a suitable pressure drop for the cylindrical body for use. Specifically, as explained in claim 15 Carpenter teaches about 1.88mmWG/mm [0017].
Therefore, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the smoking device of Xia to have the pressure drop as taught by Carpenter, because both Xia and Carpenter are directed to smoking articles with hollow tube members, Xia is silent to suitable pressure drops for the hollow tube members for use, and one of ordinary skill in the art would have been motivated to look to a similar reference to find suitable pressure drops for a similar smoking article. Carpenter teaches known pressure drops for a similar hollow tube, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
However, Carpenter fails to teach a cylindrical body short enough that would result in a pressure drop across the cylindrical body of between 3mmWG and 8mWG, or between 4mmWG and 7mmWG.
However, Minzoni teaches a cylindrical body between 3 to 8 mm, which, when combined with Carpenter who teaches a pressure drop per mm of 1.88, results in a pressure drop across the cylinder of 5.4 mmWG to 15.04 mmWG, which overlaps with the claimed range of a pressure drop across the cylindrical body of between 3mmWG and 8mWG, or between 4mmWG and 7mmWG.
Minzoni also teaches a similar smoking device that discloses hollow tubes and discloses that the disclosed lengths of the taught hollow tubes have been shown to enable good manufacture of the tubes and good handling of the tubes when assembling the aerosol generating articles. (page 5 second to last paragraph). Therefore, a person of ordinary skill in the art would have been motivated to modify the smoking article of modified Xia with the disclosed lengths of hollow tubes of Minzoni to enable good manufacture of the tubes and good handling of the tubes when assembling the aerosol generating article.
Response to Arguments
Applicant’s arguments, see Remarks and amendments filed 4-8-2026 with respect to the objections to the claims, drawings, and specification, have been fully considered and are persuasive. Therefore, the objections to the claims, drawings, and specification have been withdrawn.
Applicants arguments, see Remarks and amendments filed 4-8-2026 with respect to the objections to the rejection of the claims under 35 USC 112b have been fully considered and are persuasive. Therefore the rejection under 35 USC 112b have been withdrawn.
Applicant’s arguments, see Remarks, filed 9-12-2025, and most specifically, claim amendments, with respect to the rejection(s) of claim(s) 1-2, and 4-17 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Xia (CN109892707A), Lisan (US20160106147A1), Besso (US20180271143A1), and Uthurry (US 20220015414A1) as set forth above.
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.
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755
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