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 .
Status of the Claims
Claims 1-9, 11-14, 17-18, and 20 are pending and subject to this Office Action. Claims 1, has been amended. Claims 10, 15-16, 19, and 21-24 have been cancelled. Claim 20 is currently withdrawn.
Response to Arguments
Applicant's arguments, pages 7-12, filed 11 March 2026, with respect to the rejection of claims 1-9, 11-14, 17-18, and 20 under 35 USC §103 have been considered but are not persuasive.
Claim 1 has been amended to add the limitation: wherein ends of the first and second rods of tobacco smoke filtering material nearest to each other together with the internal surface of the wrapper define the cavity.
Applicant argues, pages 8-9, it is not obvious to combine the Hampl, Jr. '372 patent with the remaining cited references to result in the opacity of the wrapper as claimed. One of ordinary skill in the art would not combine the wrapping paper from the Hampl, Jr. '372 patent with the filter of the Allen et al. '172 publication.
The Examiner respectfully disagrees.
Allen teaches a plurality of filter segments is circumscribed by a filter wrapper or plug wrap where the filter wrapper is preferably a paper which optionally incorporates a carbonaceous material and the filter wrapper circumscribes the total length of the filter system. [0019]
Hampl teaches high opacity wrapping papers for use in smoking articles and a method for increasing the opacity of a wrapping papers for a smoking article. (cl 1 ln 4-6 ) Hampl, Jr. teaches that the wrapping papers and tipping papers also contribute to and control many physical properties and characteristics of the cigarette including the strength of the wrapping paper. (cl 1 ln 25-28) Based on this teaching a person of ordinary skill would recognize that Hampl, Jr reference to “cigarette wrapping papers” throughout the prior art are not limited to the wrapping paper that circumscribes the rod but also could be used for the paper material that would circumscribe the filter as well.
Additionally, Hampl, Jr. teaches that increase opacity can adversely affect other characteristics of the paper, such as decreasing the strength of the paper (cl 1 ln 50-51) and provides a method of using a white pigment filler and a black pigment filler to increase the opacity of paper substrate. (cl 3 ln 46-52) Hampl, Jr. teaches that use of black pigment in small amounts increase the opacity of the paper without decreasing the whiteness and brightness of the paper below acceptable levels. (p 4 ln 45-48) This teaching is used to modify the teachings of Allen to create a filter portion that makes the article have a more appealing appearance and masks the material contained within the filter. (cl 1 ln 37-43)
Applicant argues, pages 10-11, it is not obvious to combine the Hampl, Jr. '372 patent or the Nappi et al. '838 publication with the remaining cited references to result in the basis weight of the wrapper as claimed.
The Examiner respectfully disagrees. Allen teaches that the filter would have an area that forms a cavity for the flavor bead. Hampl, Jr teaches a method for making a paper with a high opacity but also notes that a consideration of the paper characteristic that would be of concern is the strength of the paper as discussed above. Hampl teaches a paper wrapper can have a weight basis of about 18 gsm to about 60 gsm. (cl 3 32-33) However, since Hampl does not teach or suggest a paper for covering a hollow section the weight basis of the wrapping paper was not considered.
Nappi teaches a plug wrap that is used for combining filter elements that has a weight basis of less than about 120 grams per meter, preferably between 80 grams per square meter and 100 grams per square meter. [0053] Nappi teaches a that a wrap with this weight makes the presence of a hollow section less noticeable. Nappi teaches a weight basis that overlaps both the teachings of Hampl and the limitations of the instant claim; as such, a person of ordinary skill would consider using a wrapper with a weight basis of up to 120 grams per meter.
Applicant argues, pages 11-12, it is not obvious to combine the cited references to result in the combination of a void space and wrapper as claimed. The applicant argues that the wrapper claimed in claim 1 leads to a “specific vibrational frequency generated by the movement of the capsule or capsules in all directions and a desirable aural and haptic sensation.”
The Examiner notes that there are no limitations that require the filter element have a specific vibrational frequency, allow the capsule to move in all directions, or have an aural and haptic sensation. As such these features were not taken into consideration during examination.
The following is a modified rejection based on amendments to the claims.
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 and 8-18 are rejected under 35 U.S.C. 103 as being unpatentable over Allen, et al (US20120037172A1) and further in view of Besso, et al (20140311508A1), Hampl (US5893372A), and Nappi, et al (US20190045838A1).
Regarding claim 1, Allen teaches a plug space plug filter that is a multi-component filter comprising: an upstream segment of filter material; a downstream segment of filter material in a spaced apart relation to the upstream segment of filter material so as to define a cavity therebetween and a flavor bead (receptacle) that is disposed in the cavity.[0007] Allen teaches that the upstream and downstream filter elements are spaced apart in a plug-space-plug configuration such that the space forms a cavity that is defined by the upstream and downstream filter segments when circumscribed by the wrapping paper. ([0039], Fig 2) Allen both describes and depicts that the proximal end of the upstream filter segment and the distal end of the downstream filter element form the cavity that houses the flavor bead when the two filter elements are joined by the wrapping paper.
Allen teaches that a filter wrapper that is paper [0016] circumscribes the total length of the filter system [0019] but is silent to the properties of said wrapper.
Hampl, directed to the design of high opacity wrapping paper, teaches a wrapping paper for a smoking article that has an opacity of at least 80%. (Claim 1) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Allen by using wrapping paper with the opacity as taught by Hampl because both Allen and Hampl are directed to the design of cigarette filters, Hampl teaches cigarette wrapping papers with high opacity are pleasant in appearance and mask the contents (cl 4 ln 40-44), and this involves the use of known technique to improve similar devices in the same way.
Nappi , directed to smoking articles with filters, teaches the use of a plug wrap having a weight of 120 grams per square meter or less can be used with a hollow filter element. [0053] This range, as taught by Nappi, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Allen by using wrapping paper with the weight as taught by Nappi because both Allen and Besso ‘766 are directed to the design of filters for smoking articles, Nappi teaches this allows the hollow portion of the filter to exhibit a similar firmness to the other filter segment [0054], and this involves the use of known technique to improve similar devices in the same way.
Allen teaches that the capsule would be at least 75% of the volume of the cavity as the preferred design for the embodiments discussed but does not explicitly discuss beads with other sizes.
Besso, directed to the design of filter elements containing a capsule, teaches the range of capsule diameter can be 30% or less and up to 99% of the cavity diameter. [0031] A person having ordinary sill in the art would recognize that the portion of the cavity not occupied by the capsule would be void space and that when the capsule diameter was between 30% and 50% the void space of the cavity would be 50% or greater. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Allen by using the capsule of with the diameter range as taught by Besso because both Allen and Besso are directed to the design of cigarette filters containing a capsule in a void space, Besso teaches a capsule that is smaller in diameter than the void space diameter allows for better release of the fluid [0031], and this involves the use of known technique to improve similar devices in the same way.
Regarding claims 2 and 3, Allen teaches that the receptacle is a flavor bead and that the flavor bead can be a crushable capsule that releases a flavorant or additive material. [0029]
Regarding claim 4, Allen fails to disclose the void space remaining in the cavity is 51 to 90 % of the volume of the cavity.
As discussed in claim 1, Besso discloses that the capsule can range between 30% and 99% of the cavity. [0031] A person having ordinary sill in the art would recognize that the portion of the cavity not occupied by the capsule would be void space and that when the capsule diameter was between 30% and 50% the void space of the cavity would be 50% or greater. Besso also teaches a non-preferred embodiment where the capsule can be less than 30% of the diameter of the cavity. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 5, Allen teaches that the filter is a cylindrical filter assembly that is aligned in an end-to-end relationship with the tobacco rod. ([0002], Fig 2)
Regarding claim 6, Allen teaches that the upstream filter components can be cellulose acetate or other suitable fibrous or webbed materials of moderate to low particulate efficiency. [0020-0021] The webbed filter material is considered to read on the filamentary tow.
Regarding claim 8, Allen teaches that the upstream filter element is a made of a plug of cellulose acetate tow with a low resistance to draw [0020] and the upstream filter element is made of a cellulose acetate plug. [0021] Allen also teaches for either of these filter elements that other fibrous or webbed material of moderate to particulate efficiency would be suitable as materials. A person having ordinary skill in the art would recognize that Allen does not require that the upstream and downstream filter elements be made of the exact same material and suggests that the selection is based primarily on the filter material’s resistance to draw.
Regarding claim 9, Allen teaches that the filter system is generally cylindrical in shape and has essentially equal diameter as that of the tobacco rod. The smoking article, which includes the filter system, is about 6.0 mm to 10.0 mm in diameter. [0017] A person having ordinary skill in the art would recognize that a cylindrical shape with this diameter would have a circumference of about 19 mm to about 31 mm. This range, as taught by Allen, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Regarding claim 11, Allen teaches that an embodiment where the space or cavity, which encapsulates the flavor bead is preferably about 6 mm. [0023] The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 12, Allen teaches that the wrapping material is secured to the filer elements and the tobacco rod using a suitable adhesive. [0019] Allen specifically states where the adhesive would be used in the filter assembly which does not include the cavity for the flavor bead.
Regarding claim 13, Allen teaches that the flavor beads (receptacle) can have a diameter in the range of about 3.5mm to 10.0mm. The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 14, as discussed in claim 9, Allen teaches that the filter distance between the two absorbent members that creates the space or cavity for the capsule is 6mm.[0023] and that the diameter of the capsule can be 75% of this space. [0006] Allen also teaches that the tobacco rod and the filter system generally have a diameter between 6.0mm and 10.0 mm. A person having ordinary sill would recognize that the capsule of Allen would have a maximum diameter of 4.5 mm based on the 6 mm cavity space; as such a cavity having a diameter of 5.3mm or greater would read on the limitations of the instant claim and it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 17, Allen teaches that the flavor bead is effective in releasing flavor into the mainstream smoke so as to produce a flavored smoke [0028] and allows for the controlled release and delivery of the active compounds. [0031] . The controlled release of the flavor so that the smoke flavor is more consistent 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 Allen
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, Allen teaches that the filter system is generally cylindrical in shape and has essentially equal diameter as that of the tobacco rod. The smoking article, which includes the filter system, is about 6.0 mm to 10.0 mm in diameter. [0017] This range, as taught by Allen, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Allen, et al (US20120037172A1), Nappi, et al (US20190045838A1), Hampl (US5893372A), and Besso, et al (US20140311508A1), and further in view of Karles, et al (US20070012327A1).
Regarding claim 7, Allen, Besso ‘776, and Besso ‘508 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 Allen, Hampl, Nappi, and Besso by adding activated carbon to the upstream filter element as taught by Karles because both Allen, Hampl, Nappi, Besso, 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
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 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