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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10-28-2025 has been entered.
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 10-28-2025.
Claim 1 is amended, claim 6 is canceled.
Claims 1, 2, and 4-5, 7, and 15 are presently examined.
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, 2, 4, 5 are rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 20190098927A1), Caenen (US 20190075842A1), and Counts (US5388594A).
Regarding Claim 1, Mironov teaches an aerosol generating article comprising:
a first portion including an aerosol generating material impregnated with an aerosol generating element (liquid retention material 22 is impregnated with an aerosol generating element [0106]), and ;
a second portion including a tobacco element (tobacco plug 21, see [0111]);
a third portion including a cooling element (aerosol cooling element 4, see [0114] and FIG 1); and
a fourth portion including a filter element (mouthpiece 5 is a filter, [0114] and FIG 1), wherein
the first portion, the second portion, the third portion, and the fourth portion are sequentially arranged in a longitudinal direction of the aerosol generating article,
Mironov discloses the first portion and second portion arranged sequentially in a longitudinal direction in [0009], the third portion (aerosol cooling element 4) is located immediately downstream of the sealing element 3 [0113] which is downstream of the first and second portion [0108], the fourth portion (mouthpiece 6 is located immediately downstream of the aerosol cooling element 4 and abuts the aerosol cooling element 4 [0114].
Mironov teaches the filter element includes a cellulose acetate tow [0055] but is silent to the denier per filament and total denier of the tow. Thus, a person of ordinary skill in the art would have been motivated to search the known art for suitable denier per filament and total denier of the cellulose acetate tow.
However, Caenen teaches a cellulose acetate tow having a denier per filament of about 17 to about 29 and a total denier of about 10,000 to about 40,000. Specifically, Caenen teaches a denier per filament of at least 20 and a total denier of greater than 20,000 [0013] which falls within the claimed range of a cellulose acetate tow having a denier per filament of about 17 to about 29 and a total denier of about 10,000 to about 40,000. 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).
Caemen also teaches that by using a cellulose acetate tow having at least 20 denier per filament leads to improvement in draw while maintaining desired hardness of the filter [0014].
Therefore, it would have been obvious for a person of ordinary skill in the art to modify the smoking device of Mironov with the filter of Caemen so that the smoking device of Mironov would have a suitable filter that would lead to improvements in draw while maintaining desired hardness of the filter.
Mironov teaches the second portion further includes the aerosol generating element (the tobacco containing material can include an aerosol former such as glycerine [0019]).
However, Mironov is silent to the second portion (tobacco containing material) includes the aerosol generating element in about 3 weight percent (wt%) or less with respect to a dry weight of the aerosol generating material. Mironov is silent to any suitable weight percent of the aerosol former indicated to be included in the aerosol generating element.
Thus, a person of ordinary skill in the art would have been motivated to search the known art for suitable weight percentages of aerosol former suitable for use in the tobacco containing material in aerosol generating articles.
Counts teaches the aerosol generating material (tobacco web) includes the aerosol generating element (humectant) in about 0.5% to about 10% by weight of the aerosol generating material (see column 9 lines 45-48), which overlaps with the claimed range of about 3 weight percent or less with respect to a dry weight of the aerosol generating material. 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). Counts also teaches the humectant facilitates the formation of a visible aerosol by acting as an aerosol precursor and the humectant produces the appearance of conventional cigarette smoke (see column 9 lines 49-54).
Therefore, it would be obvious for a person of ordinary skill in the art to modify the aerosol generating material of Mironov to include the aerosol generating element in about 0.5% to about 10% by wight of the aerosol generating material to facilitate the formation of a visible aerosol by acting as an aerosol precursor and also because the humectant produces the appearance of conventional cigarette smoke.
Regarding Claim 2, modified Mironov teaches the claim limitations as set forth above.
Additionally, Caenen teaches the cellulose acetate tow has a denier per filament of about 18 to about 23 and a total denier of about 15,000 to about 35,000.
Specifically, Caenen teaches a denier per filament of at least 20 and a total denier of greater than 20,000 [0013] which falls within the claimed range of a cellulose acetate tow having a denier per filament of about 17 to about 29 and a total denier of about 10,000 to about 40,000. 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 4, modified Mironov teaches the claim limitations as set forth above.
Additionally modified Mironov teaches a circumference of a cross-section of the fourth portion, the cross-section being perpendicular to the longitudinal direction of the aerosol generating article, is about 14 mm to about 25 mm.
Specifically, Mironov teaches the diameter of the mouthpiece (fourth portion) has a diameter that is the same as the aerosol generating article [0066]. Mironov teaches the diameter of the aerosol generating article is 5 mm to 12 mm [0008]. Thus, Mironov teaches that the circumference of the fourth portion is about 15mm – 37mm which lies inside and overlaps with the claimed range, a circumference of a cross-section of the fourth portion, the cross-section being perpendicular to the longitudinal direction of the aerosol generating article, is about 14 mm to about 25 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).
Regarding Claim 5, modified Mironov teaches the claim limitations as set forth above.
Although modified Mironov is silent to absorption resistance and further to an absorption resistance of the fourth portion is about 0.5 mmH2O to about 2.5 mmH2O, the instant specification explains that absorption resistance is affected by the physical factors of the cellulose acetate (CA) tow and therefore the claimed range of absorption resistance is caused by having a CA tow with a denier per filament of 18-23 and a total denier of 15,000 to 35000 as claimed in claim 2 (see page 16 first and second paragraphs of instant specification).
Modified Mironov teaches the same denier per filament and total denier, which is taught by modified Mironov as explained above in the rejection of claim 2, Therefore, modified Mironov teaches the same fourth portion which must therefore have the same absorption resistance as claimed, e.g., an absorption resistance of the fourth portion is about 0.5 mmH2O to about 2.5 mmH2O,
One of ordinary skill in the art would reasonably expect that the prior art filter would behave similarly as claimed since both modified Mironov’s filter and Applicant’s filter are both directed to the same filter with the same properties. It would therefore be expected that the filters have the same properties suitable for a filter and would thus have the same absorption resistance and would behave the same, with a reasonable expectation of success.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 20190098927A1), Caenen (US 20190075842A1), and Counts (US5388594A) as applied to claim 1 above, and further in view of Tsuji (US20190142072A1).
Regarding Claim 7, modified Mironov teaches the claim limitations as set forth above. Additionally, Mironov teaches the first portion includes the aerosol generating element but is silent to the weight percentage the aerosol generating element comprises in the aerosol generating material, and is further silent to being about 65 to about 95 weight percent (wt%) with respect to a dry weight of the aerosol generating material.
Thus, a person of ordinary skill in the art would have been motivated to search the known art for suitable weight percentages for an aerosol generating element in an aerosol generating material.
Tsuji teaches the first portion includes the aerosol generating element in about 65 to about 95 weight percent (wt%) with respect to a dry weight of the aerosol generating material (the aerosol generating liquid is more preferable 70% by weight or more [0060]) which falls within the claimed range the aerosol generating element in about 65 to about 95 weight percent (wt%) with respect to a dry weight of the aerosol generating material. 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 to modify the weight percentage of the aerosol generating element in the aerosol generating material of Mironov to have a weight percentage of 65 to about 95 weight percent (wt%) with respect to a dry weight of the aerosol generating material as taught by Tsuji because both Mironov and Tsuji are directed to smoking devices with aerosol generating elements, Mironov is silent in regards to suitable weight percentages of aerosol generating elements for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable weight percentages of aerosol providing elements for a similar smoking article. Tsuji teaches known weight percentages of aerosol generating elements for a similar smoking device and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 20190098927A1), Caenen (US 20190075842A1), and Counts (US5388594A), as applied to claim 1, and further in view of Schmid (https://www.tobaccoasia.com/features/chasing-the-cat-out-alternative-cigarette-filter-materials/)
Regarding Claim 15, modified Mironov teaches the claim limitations as set forth above.
However, Mironov as modified above is silent to a suitable mass of the cellulose acetate tow. Thus, a person of ordinary skill in the art would have been motivated to search the known art for a suitable mass of cellulose acetate to include in the filter segment.
Schmid teaches suitable masses of tow material in filters for use and teaches the fourth portion (filter portion) includes on average about 0.4 g of mass (see page 4, second to last paragraph), which falls within the claimed range of the fourth portion includes about 320mg to about 510 mg of cellulose acetate tow. 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 for a person of ordinary skill in the art before the filing date of the claimed invention to modify the fourth portion of Mironov, to include about 0.4 g of cellulose acetate tow as taught by Schmid, because both Mironov and Schmid are directed to smoking articles comprising filter sections, Mironov is silent in regards to suitable masses for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable masses for a similar smoking article, Schmid teaches known masses for a similar filter, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Additionally, filtration is a result dependent variable. It would be obvious to a person of ordinary skill in the art that filtration is useful for filtering and changing the mass of a filter and that by changing the size or mass of the filter it would be beneficial for obvious reasons of increasing or decreasing filtration as desired, e.g., a more massive filter would do more filtration and a less massive filter would do less filtration.
Response to Arguments
Applicant’s arguments and claim amendments filed 10-28-2025 with respect to the rejection of the claims under 35 USC 103 have been fully considered and are persuasive. Therefore, the previous rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Mironov (US 20190098927A1), Caenen (US 20190075842A1), and Counts (US5388594A).
Conclusion
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/M.T.F./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747