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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/11/2026 has been entered.
Status of Claims
Claims 1, 3-9, 11, 13-14, 16-19, 23-24, and 31 are pending. Claims 13-14, 16-19, 23-24, and 31 are withdrawn. Claims 2, 10, 15, 20-22, 25-30, and 32-36 are cancelled. Claim 1 is amended.
Response to Amendment
The amendments of 02/11/2026 are entered. Claims 2 and 10 were cancelled and the subject matter from these claims was incorporated into claim 1. The subject matter of claims 2 and 10 both previously depended on claim 1, and thus the rejections below require revision to account for the changes as a result of this previously unconsidered combination of limitations.
Response to Arguments
Applicant's arguments filed 02/11/2026 have been fully considered but they are not persuasive.
Applicant argues that the words in the preamble, which provide “for use in a non-combustible aerosol provision system” may be used to disqualify the Pasquine reference. Applicant refers to Pasquine is a mouthpiece for a conventional combustible cigarette and seeks to define Pasquine as limited to the field of combustible cigarettes.
Examiner the cigarette of Pasquine can be used by heating and not burning the tobacco portion of the smoking article. There are no structural differences between the Applicant’s claims and the disclosure of Pasquine. Applicant is merely arguing at Examiner, rather than providing evidence and support for their arguments. MPEP 2145 Consideration of Applicant’s Rebuttal Arguments and Evidence, I. Argument Does Not Replace Evidence Where Evidence Is Necessary.
Pasquine structurally anticipates the claims, and regarding the subject matter of claim 10, renders it obvious, while never requiring a particular method by which the smoke is formed; there is no evidence that the ventilation structures and techniques of Pasquine are applicable to only combustion smoke. Applicant assertions regarding combustion are not in the reference at all.
The MPEP directs that the preamble is not a limitation where a claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim.
The cigarette of Pasquine is capable of being used in a non-combustible aerosol provision system, and the MPEP directs the Examiner to give the preamble no patentable weight.
Using conventional cigarettes as part of a non-combustible smoking device (the intended use entitled to no patentable weight), is taught by Adiga et al. (US 6,598,607 B2). Adiga teaches using a conventional cigarette, with a device comprising an external fuel element, that generates smoke from the cigarette without ignition and substantial burning of the cigarette, See ([Adiga col 3 lines 12-40]):
Thus, the smoking article of Pasquine may have the specific intended use as part of a non-combustible aerosol provision system, Adiga requires no modification of the conventional cigarette for it to be smoked without combusting the cigarette, and Pasquine does not disclose any requirement that the smoke of Pasquine be produced by combustion. Applicant arguments are considered mere arguments at the Examiner, without any evidentiary support, and are not persuasive.
Applicant argues that the limitation of former claim 2, amended into claim 1, is not anticipated by Pasquine, where the inner wall is required to be substantially impermeable to prevent the aerosol in the inner channel from mixing with the external air.
Yet, this limitation is broadly described in the Abstract of Pasquine, ([col 2 lines 33-36] cited in the prior rejection), and Pasquine discloses that the ventilating air stream and smoke stream are each delivered separately to the mouth, these passages are passages are each delivered separately, see Fig 1:
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also, ([col 4lines 45 -53]), describing that the essential requirement is that the air and smoke be kept separate, and also, ([col 5 lines 33-43] recognizing that absent portion sealing the end of the ventilation air passage, smoke from the filter portion upstream could infiltrate the ventilation air passage(s)).
These passages by their descriptions disclose that the inner wall separating the inner channel from the at least one outer channel, is substantially impermeable to air.
Additionally, Applicant argues that the outer channel is one or more outer channels and the ratio of the combined cross sectional area of the one or more one outer channels to the cross sectional area of the inner channel is in the range 5:1 to 0.5:1 is not obvious based on the disclosure of Pasquine. As disclosed above, Pasquine contemplates multiple outer channels, “the ventilation passages” being described throughout the document. Pasquine does not particularly describe the ratio of the combined cross sectional area of the outer passages to the cross sectional area of the inner channel. Thus, this limitation is not anticipated, and the incorporation of this limitation into claim 1 requires that the rejection of claim 1 be grounded in obviousness.
Applicant arguments against the disclosure of Pasquine with regard to the obviousness rejection of this limitation are not persuasive.
By disclosing outer ventilation passages and an inner smoke channel, Pasquine discloses structures that necessarily result in a ratio of combined cross sectional areas of the outer channels to the cross sectional area of the inner channel. Put another way, the ventilation passages have a cross sectional area, the smoke channel has a cross sectional area, and a ratio of the passages to the inner passage exists. It is the particular claimed ratio range that Pasquine does not disclose. Thus, the question of whether one of ordinary skill in the art would find it obvious to configure Pasquine in such a way to read on the claimed invention – the cigarette of Pasquine having a ratio that falls within the claimed range must be evaluated.
The ventilation passages are to provide ventilation air to the mouth of the user, and the inner smoke passage is to provide the smoke to the user’s mouth, see ([Col 2 lines 22-38]). Separating the ventilation and smoke streams is disclosed as causing the first commingling of the smoke stream and the ventilating air streams occurs in the smoker’s mouth, resulting in a better taste and increased flavor experience for the smoker, ([col 1 line 71 - col 2 line 3]). The ventilation air provides cooling diluting air, and also causes the residence time of the smoke to be greater within the filter, ([col 3 line 55 - col 4 line 13]). Modifying the cross sectional ratio of the ventilation passages and smoke passage is considered an obvious way to modify the residence time of the smoke in the filter, and also to alter the degree of cooling air available to cool the smoke from the inner passage.
Because the specific area of the ventilation passages compared to the smoke passages are not taught, the amount of cooling air compared to the amount of smoke is considered to be a design choice left to one of ordinary skill in the art, which one of ordinary skill would effect by altering the cross sectional areas of the ventilation air passages compared to the smoke passage cross sectional area.
Pasquine does offer some guidance to one of ordinary skill in the art regarding the ratio of the passages because Pasquine discloses using a dilution range of between 0-80%, ([pg 5 lines 3-50]). Pasquine discloses that the actual dilution employed being determined by factors such as endpoint of acceptable taste, resistance to draw, etc, ([col 5 lines 50-53] these being common design parameters upon which one of ordinary skill in the art would vary the dilution). Pasquine discloses that to alter the dilution level, some outer channels may not be provided with openings to the ambient air (effectively eliminating these outer channels), ([col 5 lines 53-59]). Pasquine discloses a variety of embodiments some with few outer channels and some with many, See Figs 1a, 6-9).
Because the Examiner cannot be certain as to the ratio of the cross sectional areas disclosed by a dilution range of 0-80%, the rejection of the cross sectional ratio was grounded in obviousness rather than anticipation. But, it is at least obvious to provide cross sectional areas in the range claimed by Applicant given this dilution range, because it is reasonable to assume that one of ordinary skill in the art may choose to have the ratio of the cross area of the ventilation passages compared to the smoke passage at 4 to 1 for an 80% dilution and reasonably configure the filter will essentially no ventilating passages to produce a cigarette with 0%. This substantially overlaps the Applicant’s claimed range and renders it obvious.
Pasquine also discloses that flavoring substances can be incorporated into the outer channels, ([col 2-3 lines 72-2], [col 6 lines 62-73), and that smoke treating substances can be incorporated in the inner channels, ([col 3 line 3-4]). Pasquine discloses that the internal channel may be divided by ribs that may be used to strengthen the mouthpiece structure and provide an attractive appearance, ([col 2 lines 64-69], [col 7 lines 29-31] Fig 7 depicting a single rib, but showing that the rib impacts the ratio of cross sectional areas by taking area away from the inner channel). These are additional reasons to modify the ratio of the cross sectional areas of the ventilation passages compared to the smoke passage. It is obvious that incorporating flavorants in the ventilation passages may require enlarging these passages to accommodate the flavorant, just as incorporating the flavorant into the smoke passage might require the opposite. The aesthetic features may further result in modifying the cross sectional ratio. All of these are left to one of ordinary skill in the art. They are the choices, made as part of the design of the cigarette of Pasquine, left to one of ordinary skill in the art, and these choices made in the design of the cigarette according to Pasquine are considered to result in a range of acceptable ratios of the combined cross sectional areas of the one or more outer channel areas to the cross sectional area of the inner channel, which overlaps the claimed range.
Applicant arguments have been fully considered but are not persuasive.
Claim Objections
Claim 5 is objected to because of the following informalities: the term “an inner wall” appears in line 2 of the claim but previously appears in claim 1 line 7. The inner wall of claim 5 is understood to refer back to claim 1. Amending claim 5 to recite “the inner wall” would overcome this objection. Appropriate correction is required.
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.
Claim(s) 1, 3-9, and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pasquine et al. (US 3,490,461).
Regarding claim 1, Pasquine discloses a component, ([col 2 line 24] tubular mouthpiece) of a aerosol provision system, (the limitation a non-combustible aerosol provision system is considered an intended use, which does not require any structural limitations not already present in Pasquine, thus this limitation is not given further patentable weight, see Response to arguments above), the component comprising:
an inner channel, ([col 2 lines 25-28] a central passage);
at least one outer channel, ([col 2 lines 28-31]); and
at least one ventilation area arranged to allow external air to flow into the at least one outer channel, ([col 2 lines 33-38]);
an inner wall separating the inner channel from the at least one outer channel, wherein the inner wall is substantially impermeable to air, ([col 2 lines 33-36] the ventilating air stream and smoke stream are each delivered separately to the mouth, see also Response to arguments above);
By disclosing outer ventilation passages and an inner smoke channel, Pasquine discloses structures that necessarily result in a ratio of combined cross sectional areas of the outer channels to the cross sectional area of the inner channel. Put another way, the ventilation passages have a cross sectional area, the smoke channel has a cross sectional area, and a ratio of the passages to the inner passage exists. It is the particular claimed ratio range that Pasquine does not disclose. Thus, the question of whether one of ordinary skill in the art would find it obvious to configure Pasquine in such a way to read on the claimed invention – the cigarette of Pasquine having a ratio that falls within the claimed range must be evaluated.
The ventilation passages are to provide ventilation air to the mouth of the user, and the inner smoke passage is to provide the smoke to the user’s mouth, see ([Col 2 lines 22-38]). Separating the ventilation and smoke streams is disclosed as causing the first commingling of the smoke stream and the ventilating air streams occurs in the smoker’s mouth, resulting in a better taste and increased flavor experience for the smoker, ([col 1 line 71 - col 2 line 3]). The ventilation air provides cooling diluting air, and also causes the residence time of the smoke to be greater within the filter, ([col 3 line 55 - col 4 line 13]). Modifying the cross sectional ratio of the ventilation passages and smoke passage is considered an obvious way to modify the residence time of the smoke in the filter, and also to alter the degree of cooling air available to cool the smoke from the inner passage.
While the specific area of the ventilation passages compared to the smoke passages are not taught, the amount of cooling air compared to the amount of smoke is considered to be a result effective variable, which one of ordinary skill would effect by altering the cross sectional areas of the ventilation air passages compared to the smoke passage cross sectional area.
Because Pasquine offers some guidance to one of ordinary skill in the art regarding the ratio of the passages because Pasquine discloses using a dilution range of between 0-80%, ([pg 5 lines 3-50]). Pasquine discloses that the actual dilution employed being determined by factors such as endpoint of acceptable taste, resistance to draw, etc, ([col 5 lines 50-53] these being common design parameters upon which one of ordinary skill in the art would vary the dilution). Pasquine discloses a range for dilution, and specific properties to optimize the diluition towards, thus the dilution range is considered a result effective variable. Pasquine further discloses that to alter the dilution level, some outer channels may not be provided with openings to the ambient air (effectively eliminating these as outer channels), ([col 5 lines 53-59]). Pasquine discloses a variety of embodiments some with few outer channels and some with many, See Figs 1a, 6-9). Because dilution range is directly related to the cross sectional area of the channels, optimizing the dilution in Pasquine would result in optimizing the cross sectional area of the channels and include channel ratios that fall within the claimed range, rendering the claimed range of channel ratios obvious when optimized across the disclosed dilution range.
Regarding claim 3, Pasquine discloses the component of claim 1. Pasquine further discloses the component comprises an outer wall, wherein the at least one ventilation area is formed in the outer wall, ([col 2 lines 38-48]).
Regarding claim 4, Pasquine discloses the component of claim 3. Pasquine further discloses the at least one ventilation area comprises at least one ventilation aperture formed in the outer wall, ([col 2 lines 45-48]).
Regarding claim 5, Pasquine discloses the component of claim 3. Pasquine further discloses an embodiment with an end wall connecting the inner wall and the outer wall, the end wall defining a distal end of the at least one outer channel, ([col 5 lines 40-42] Fig 1 depicting an end wall ref 31, connecting the outer wall and the inner wall, the end wall ensuring that the outer channel path is kept separate from the internal aerosol flowing through the cigarette).
Regarding claim 6, Pasquine discloses the component of claim 1. Pasquine further discloses a component with a plurality of outer channels, ([Fig 1a, depicting a tube comprising an inner wall with grooves on an exterior surface that form a plurality of outer channels between the inner wall and sheets wrapped around the inner wall], [Fig 6 & 8-9, depicting unwrapped inner tubes, which will form a plurality of outer channels when wrapped with one or more sheets], [Fig 7, depicting channels formed in the inner wall that form a plurality of outer channels]), each outer channel having at least one corresponding ventilation area, ([col 2 lines 36-38]).
Regarding claim 7, Pasquine discloses the component of claim 6. Pasquine further discloses one or more walls formed from a sheet material, ([col 2 lines 42-44] disclosing a wrapper sheet may be used to enclose the mouthpiece which is considered to form an outer wall around the mouthpiece).
Regarding claim 8, Pasquine discloses the component of claim 6. Pasquine further discloses the outer channels are arranged around the inner channel, ([Fig 1a, 6-9]).
Regarding claim 9, Pasquine discloses the component of claim 1. Pasquine further discloses the inner channel and the at least one outer channel are substantially parallel, ([col 2 lines 31-33] substantially parallel is understood to require that the channels extend in the same general direction within the mouthpiece, such that even that outer channels depicted in Fig 9 forming a spiral around the inner channel would anticipate this limitation, as would the channel arrangement depictions of all the other Figs 1a-8).
Regarding claim 11, Pasquine discloses the component of claim 1. Pasquine discloses the component further comprises a mouth end and a distal end, wherein the inner channel and the at least one outer channel are open at the mouth end, ([col 2 lines 24-28],[col 2 lines 33-34] Fig 1,2-5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747