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
The disclosure is objected to because of the following informalities: The abstract should be in the narrative from and generally limited to a single paragraph within the range of 50 to 150 words in length. The abstract is objected to for being less than 50 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).
Appropriate correction is required.
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 7-20-2026.
Claim 1 is amended
Claims 1, 2, and 4-5, 7, and 15 are presently examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-2, 4-5, 7, and 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
On page 18 paragraph 3 (referred to by applicant as page 19), the specification discloses that the second portion may include aerosol generating element in an amount of 3 wt% or less with respect to a dry weight of the aerosol generating material, and separately discloses that the first portion may include aerosol generating element in an amount of 65-80 wt% with respect to a dry weight of aerosol generating material. The disclosure does not state or otherwise teach that the amount of aerosol generating element in the second portion is calculated using the dry weight of the aerosol generating material in the first portion as its denominator.
Furthermore, the first portions (210) aerosol generating material is separately described as, e.g., a wound sheet (see last paragraph of page 13 and first 2 paragraphs of page 14), but the specification fails to provide component weights, examples, or calculations relating the aerosol generating element in the second portion 220 to the dry weight of that first portion material 210. Accordingly the originally filed disclosure does not reasonably convey to a person of ordinary skill in the art that the inventors possessed the presently claimed cross portion weight percent limitation as explained above.
Claims 2, 4-5, 7, and 15 are rejected by virtue of their dependence on claim 1.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claim 1 is 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.
Specifically Claim 1 is indefinite because it requires the aerosol generating element to be in the first portion. However, claim 1 introduces a second portion which (with this amendment) also requires the same aerosol generating element to be included therein in the second portion. Its unclear if the first and second portions are both the same portion and therefore both contain the same aerosol generating element or if there is a second aerosol generating element also in the second portion that has some relationship to the aerosol generating element in the first portion. Additionally, its unclear how the aerosol generating element in the first portion and second portion are related to each other and further adds confusion to how the first and second portions are related to each other.
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 Chen (US20100300463A1).
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 and the aerosol generating element (tobacco plug 21 and glycerol or propylene glycol, see [0103], compare with [0106]); although arranged axially in [0103]-[0106] Mironov discloses in [0009] that the first portion and the second portion can be arranged sequentially in a longitudinal manner which is not illustrated in the drawings but disclosed by Mironov in [0009]. This arranged in a longitudinal manner language is interpreted to require the first portion of Mironov to come first in a longitudinal sequential manner followed by the second section, then the third section, followed by the fourth section, in a longitudinal sequential series.
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, (e.g., a first portion and second portion arranged sequentially in a longitudinal sequential series 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 with an upper limit of 60,000 [0013] which overlaps with 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] or glycerol [0029], and teaches that the aerosol former is a hygroscopic material that functions as a humectant [0028], which helps keep the substate moist [0028]).
However, Mironov is silent to a suitable amount of glycerol or propylene glycol in tobacco plug 21, although Mironov expressly teaches the plug 21 includes glycerol or propylene glycol 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.
Chen teaches tobacco compositions that can be used in electronic smoking articles [0069] and teaches that glycerin or propylene glycol may be included in the tobacco composition at about 0.2 to 2 dry weight% [0062].
It would have been obvious to a person of ordinary skill in the art before the filing date of the claimed invention to use Chen’s known suitable amount of humectant loaded into the tobacco plug 21 of Mironov in order to select a suitable amount of the same aerosol forming ingredient in the same type of tobacco composition because both Mironov and Chen are directed to smoking articles with tobacco compositions that include aerosol formers, Mironov is silent in regards to suitable amounts of aerosol former for use in such tobacco compositions and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable amounts of aerosol former for use in a similar composition. Chen teaches known concentrations of aerosol former for tobacco compositions, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
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, because it is merely the optimization of a result effective variable, MPEP 2144.05.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 20190098927A1), Caenen (US 20190075842A1), and Chen (US20100300463A1) as applied to claim 1 above, and further in view of Capelli (US20220202063A1).
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.
Capelli teaches aerosol generating substrates and teaches glycerin and propylene glycol are suitable aerosol forming agents suitable for use in aerosol generating substrates and teaches suitable compositions of aerosol generating substrates include 44-60 wt% glycerin [0114]-[0115]. On a dry weight basis the wt% composition is 77.2% aerosol former relative to the dry weight of the aerosol generating substrate material, 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 Capelli because both Mironov and Capelli are directed to aerosol generating substrates 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. Capelli 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 Chen (US20100300463A1), 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 most specifically claim amendments filed 7-20-2026 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, and in view of amendments to claim 1, a new ground(s) of rejection is made in view of Mironov (US 20190098927A1), Caenen (US 20190075842A1), Chen (US20100300463A1), and Capelli (US20220202063A1), et al 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.
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
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