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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 19 August 2026 has been entered.
Status of the Claims
Claims 1-9, 11-12, 14, and 17-18 are pending and subject to this Office Action. Claims 1 has been amended. Claims 10, 13, 15-16, and 19-24 have been cancelled.
Response to Arguments
Applicant’s arguments, pages 6-12, dated 19 August 2026, with respect to claims 1-6, 8, 9, 11, 12, 14, 17, and 18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8-9, 11-12, 14, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Grishchenko (WO2020249954A1, having a priority date 11 June 2019) and further in view of Besson (WO2017044558).
Regarding claim 1, Grishchenko teaches an article for use with a heat-not-burn system that includes an aerosol generating material and a mouthpiece section (filter element). The mouthpiece portion is comprised of a first body of material (first filter material) and a second body of material (second filter material), and a cavity (distance) between the first and second body. The cavity includes a breakable capsule. (Abstract, p10 ln 26-31) Grishchenko teaches the first and second bodies of material are arranged along the longitudinal axis of the body. (p10 ln 26-31)
Grishchenko teaches a tipping paper covers the mouthpiece, including the cavity section, and overlaps the aerosol generating material. (p7 ln 32-33, p21 ln 32-33) and can have a basis weight that is 40 g/m2 to 80 g/m2 (p22 ln 2-4) to allow for a paper having an acceptable tensile strength while being flexible enough to wrap around the article (p 22 ln 6-7) or the filter can be encircled by a stiff plug wrap having a basis weight between 70 g/m2 and 120 g/m2 providing an acceptable overall level of rigidity for the hollow portion. (p 23 ln 10-16)
Grishchenko teaches the mouthpiece portion includes a cavity for housing a capsule (receptacle) (Abstract) and that the diameter of the capsule is less than the length of the cavity and the diameter of the cavity is greater than the length of the cavity such that the capsule is movable in both the transverse direction and the longitudinal direction. (p10-11 ln 33-3) The capsule having a diameter in the range of 2mm to 6mm (p11 ln 13).
Grishchenko teaches the volume of the cavity may be in the range of about 25 mm3 to about 300 mm3. (p11-12 ln 35-2) A capsule (receptacle) with the above possible diameters would have a volume of between 4.19 mm3 and 113.1 mm3. Thus a person having ordinary skill in the art would recognize that there would be embodiments where the volume of the capsule would result in a void space in the cavity area of greater than 50% of the volume of the cavity.
Grishchenko teaches some of the properties of the tipping paper and that the mouthpiece may include a visual indicator on the external surface indicating the location of the capsule (p11 ln 6-7) but is silent as the opacity of the tipping paper.
Besson, directed to the design of flavor delivery articles with a wrapping element, teaches a smoking article the comprises a rod-shaped carrier element and a
Besson teaches the use of a tipping material that may form all or some of the wrapping element that surround the filter element or flavor carrier. Besson teaches that “typical tipping materials are papers exhibiting relatively high opacities. Representative tipping materials have TAPPI opacities of greater than about 81 percent, often in the range of about 84 percent to about 90 percent, and sometimes greater man about 90 percent.” (p8 ln 20-22 )
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Grishchenko by using typical tipping paper having a opacity of greater than 81% as taught by Besson because both Grishchenko and Besson are directed to smoking articles having filter elements, Besson teaches “Typical tipping materials are papers exhibiting relatively high opacities are known in the art” (p8 ln 20), and as such a person having ordinary skill would consider the use of a tipping paper having an opacity of greater than 81%.
Regarding claims 2 and 3, Grishchenko teaches the filter element cavity is configured to house a breakable capsule configured to release contents such as a flavorant. (abstract , p10 ln 29-31)
Regarding claim 4, Grishchenko teaches the volume of the cavity may be in the range of about 25 mm3 to about 300 mm3. (p11-12 ln 35-2) and the capsule having a diameter in the range of 2mm to 6mm (p11 ln 13). A capsule having diameters in this range would result in a capsule having the volume of 4.19 mm3 and 113.1 mm3. Thus a person having ordinary skill in the art would recognize that there would be embodiments where the volume of the capsule would result in a void space in the cavity area of greater than 51% of the volume of the cavity.
Regarding claim 5, Grishchenko teaches the article, including the mouthpiece/ filter section, is cylindrical in shape. (p10 ln 18-19, p22 ln 29-31, claim 17)
Regarding claim 6, Grishchenko teaches the material of the first body and/ or second body comprises a filamentary tow selected from both natural and synthetic materials. (p 9 ln 11-16, p13 ln 15-16, claim 5)
Regarding claim 8, Grishchenko teaches different material can be used to form the first body of material (first filter) and the second body of material (second filter). (p13 ln 24)
Regarding claim 9, Grishchenko teaches the article and thus the mouthpiece (filter element) have a circumference of 15mm to 23 mm. (p7 ln 22-24, p21 ln 22-25, claim 18) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 11, Grishchenko teaches the length of the cavity may be in the range of 2mm to 6mm. (p11 ln 22-23, claim 3) This range, as taught by Grishchenko, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Regarding claim 12, Grishchenko teaches the use of adhesive on the inner surface of the tipping paper that surrounds and connects the mouthpiece and the rod. (p 21 ln 32-33) The prior art also teaches the filter configuration is designed to allow for the movement of the capsule in the cavity. (p11 ln 1-2) A person having ordinary skill would recognize that the cavity would need to be free of adhesive for the capsule to be free moving in the cavity.
Regarding claim 14, Grishchenko teaches the capsule diameter is less than the length of the cavity and the diameter of the cavity is greater than the length of the cavity such that the transverse movement of the capsule is greater than the longitudinal range of movement (p10 ln 33-36) The prior art teaches embodiments of the invention where “The diameter of the cavity can, for instance, be about 5mm, with the capsule diameter of about 3mm and the cavity length about 4mm. Alternatively, the diameter of the cavity can be about 7mm, with the capsule diameter being about 3.5mm and the length of the cavity being about 5mm.” (p11 ln 30-33) Thus the prior art explicitly envisages embodiments where the longitudinally extending core (cavity) is at least 0.7 mm greater than the maximum width of the receptacle (capsule).
Regarding claim 17, Grishchenko teaches the encapsulation may enhance the longevity of the taste and/or aroma (p8 ln 20-21) and may help to mask other aromas that may be emitted by components of the article (p8 ln 29-30) The enhanced longevity of the taste and/or aroma so that the aroma can be detected by a user even after the flavor has diminished (p8 ln 24-27) is considered to read on the “greater yield” limitation of the instant claim.
The claim is directed to an intended result of using the filter. Since the filter of Grishchenko has the same component and a capsule capable of moving in the cavity a person having ordinary skill in the art would reasonably expect the filter to perform in a similar manner and achieve greater yields than compared to a filter that does not allow movement within the filtering material, absent evidence to the contrary.
Regarding claim 18, Grishchenko teaches the cavity may have a diameter in the range of 3.5mm to 8mm. (p11 ln 17-18) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Grishchenko (WO2020249954A1, having a priority date 11 June 2019) and Besson (WO2017044558), as applied to claim 1, and further in view of Karles, et al (US20070012327A1).
Regarding claim 7, Grishchenko and Besson are silent with respect to using carbon in the filter element.
Karles, directed to the design of filter subassemblies, teaches that the filter assembly would contain activated carbon and that the activated carbon could be included within the filter tow material. ([0055], [0097] ) Karles teaches that the filter would have an upstream sorbent and a downstream capsule. [0035]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Grishchenko and Besson by adding activated carbon to the upstream filter element as taught by Karles because Grishchenko, Besson, and Karles are directed to the design of cigarette filters, Karles teaches arrangement would allow for the filtration of the cigarette to be accomplished by the sorbent, and for the flavor to be disposed within the cigarette without the effectiveness of the flavor being affected by absorption or adsorption by the sorbent. [0035], and this involves the use of known technique to improve similar devices in the same way.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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/V.R.B./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
