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 13, 20-23, and 26-41 are pending and are subject to this Office Action. Claims 1-12, 14-19, and 24-25 are cancelled. Claims 13, 20, 26, and 28-41 are amended.
Response to Amendments
The amendments to the claims filed on December 2, 2025 are acknowledged.
Response to Arguments
Applicant' s arguments filed December 2, 2025, with respect to the rejection(s) of claims 13, and 19-38 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claim 13 to include a limitation that was not previously presented and that the previously applied prior art does not disclose: “wherein the first biodegradable element is a sheet material comprising card, board, or paper, wherein the second biodegradable elements are made of biodegradable materials including paper, cotton, natural fibres, and/or recycled biomaterials.” Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the previously applied references in combination with a newly found prior art reference. The following is a modified rejection based on amendments made 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 13, 21-23, 26-27, 30, and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over Simpson (US 2021/0244085 A1) in view of Chong (US 2022/0202091 A1).
Regarding Claim 13, Simpson, directed to vaporizable substrates ([0002]), teaches a biodegradable cartridge for a vapour system ([0002], The present invention relates generally to a disposable flower cartridge that facilitates the smokeless delivery of active ingredients and volatile compounds released from a quantity of natural consumables that have been pre-filled in the cartridge. A heating device is used to vaporize the natural consumables in the cartridge; and [0165], FIGS. 6B, 6D, 6F, and 6H, of an embodiment of the cartridge 10 comprising a single tube 30 wherein a stopper insert 38 has been inserted into the cavity 36 of single tube 30; and [0160], Single tube 30 is made of paper (biodegradable); and [0166], Such a stopper insert 38 may be made of paper (biodegradable)),
wherein the cartridge has an elongated cylindrical shape having a cavity ([0165], Figs. 6B, 6D, 6F, and 6H; Cartridge 10 comprises a single tube 30 has an elongated cylindrical shape having a cavity 36),
the cartridge comprising a wall, a first end, and a second end ([0165], Figs. 6B, 6D, 6F, and 6H; Cartridge 10 comprises a single tube 30 defining a wall, a mouthpiece end 32 (first end), and an insertion end 34 (second end)),
wherein the wall is made of a first biodegradable element, wherein the first biodegradable element is a sheet material comprising card, board, or paper ([0165], Figs. 6B, 6D, 6F, and 6H; Cartridge 10 comprises a single tube 30 (first biodegradable element) defining the wall; and [0160], Single tube 30 is made of a rolled paper sheet),
wherein a second biodegradable element is provided to the first end of the elongated cartridge, respectively, wherein the second biodegradable element is made of biodegradable materials including paper ([0165], FIGS. 6B, 6D, 6F, and 6H; Stopper insert 38 (second biodegradable element) has been inserted into the cavity 36 of single tube 30. The stopper insert 38 may be sized and configured to block the natural consumables 44 from falling out towards the mouthpiece end 32; and [0168], stopper 38 is sized and configured to be disposable into the cavity 36 proximate the mouthpiece end 32; and [0166], Such a stopper insert 38 may be made of paper (biodegradable)), and
wherein the cartridge is configured for an air flow to flow from the first end to the second end of the elongated cartridge, and/or vice versa ([0165], Figs. 6B, 6D, 6F, and 6H; The stopper insert 38 may be sized and configured to block the natural consumables 44 from falling out towards the insertion end 34 while still permitting vaporized consumables heated by convection or conduction to flow to the mouthpiece end 32 for inhalation by the user; and [0185], Figs 10A-10D; Air is heated as it enters the oven assembly 54 and oven 56. Upon entering the cartridge chamber 58, the heated air enters the insertion end 34 of the cartridge 10 and heats the filled consumables 44 therein using heat-not-burn convection technology. The heated consumables 44 release desired chemicals at specific temperature profiles into the inhaled vapor),
but does not teach the cartridge wherein two second biodegradable elements are provided to the first and second ends of the elongated cartridge, respectively.
Chong, directed to vaporizable substrates ([0002]-[0003]), teaches a cartridge for a vapour system ([0072], Fig. 2A; The consumable-containing package 102 is the component that is heated to release the consumable in aerosol form),
wherein the cartridge has an elongated cylindrical shape having a cavity ([0072], [0086], Fig. 2A, 2C; The consumable-containing package 102 comprises a housing 150 has an elongated cylindrical shape defining a cavity housing filter tube 140 and consumable-containing unit 104),
the cartridge comprising a wall, a first end, and a second end ([0072], [0086], Fig. 2A, 2C; The housing 150 defines a wall, a first end near end cap 154 and a second end near mouthpiece 158),
wherein two second filtration elements are provided to the first and second ends of the elongated cartridge, respectively ([0086], Fig. 2A, 2C; Mouthpiece 158 and End cap 154 (second elements) are provided near the first and second ends of the cartridge, respectively; Each may be comprised of a filtration material).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the cartridge of Simpson wherein two second biodegradable elements are provided to the first and second ends of the elongated cartridge, respectively because Simpson and Chong are directed to vaporizable substrates, Chong demonstrates that providing two second filtration elements at the first and second ends of an elongated cartridge prevents a material within the cavity of the cartridge from falling out of the first or second ends, while ensuring effective filtration of its aerosol (Chong, [0085]-[0086), the second biodegradable element of Simpson is a filtration element (Simpson, [0165]-[0166], Folded paper within the cavity 36 forms a filter), and this merely involves duplicating the second biodegradable element and positioning it at the second end of the cartridge.
Regarding Claim 21-23, Simpson in view of Chong teaches biodegradable cartridge according to claim 13. Simpson further teaches the cartridge wherein the cavity contains one or more filling materials, wherein the one or more filling materials include tobacco-containing material, wherein the tobacco-containing material includes at least one of tobacco-containing granules, gel, liquid, tobacco foam, mousse, or semi-solid matrix ([0165], The cavity 36 is shown to be filled with natural consumables 44; and [0155], Natural consumables 44 comprise herbs used for smoking, such as ground cannabis flower and plant matter, hemp, tobacco, or other smoke-able plant matter; and [0156], The natural consumables, being course particulate matter with a certain amount of humidity (liquid); and [0180], to accommodate for the different physical properties of the natural consumables, such as moisture content and granularity).
Regarding Claim 26-27, and 39-40, Simpson in view of Chong teaches the biodegradable cartridge according to claim 13, but does not teach the cartridge wherein the first biodegradable element and one of the second biodegradable elements are attached to each other in an end-to-end abutment with a wrapper, wherein the wrapper is a paper wrapper, further comprising a wrapper at least partially surrounding the first biodegradable element, further comprising a wrapper at least partially surrounding one of the two second biodegradable elements.
Chong, directed to vaporizable substrates ([0002]-[0003]), teaches a cartridge for a vapour system ([0072], Fig. 2A; The consumable-containing package 102 is the component that is heated to release the consumable in aerosol form),
a first element having a cavity ([0072], [0086], Fig. 2A, 2C; The consumable-containing package 102 comprises a filter tube 140 (first element) having a cavity which surrounds consumable-containing unit 104);
two second elements are provided to the first and second ends of the cartridge, respectively ([0086], Fig. 2A, 2C; Mouthpiece 158 and End cap 154 (second elements) are provided near the first and second ends of the cartridge, respectively; Each may be comprised of a filtration material).
wherein the first element and one of the second elements are attached to each other in an end-to-end abutment with a wrapper, wherein the wrapper is a paper wrapper, further comprising a wrapper at least partially surrounding the first biodegradable element, further comprising a wrapper at least partially surrounding one of the two second biodegradable elements ([0086], Fig. 2A, 2C; Mouthpiece 158, end cap 154 (second elements), and filter tube 140 (first element) are attached to each other in an end-to-end abutment with housing 150 (wrapper), which may be formed from a paper tube. Housing 150 (wrapper) surrounds mouthpiece 158, end cap 154, and filter tube 140).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the cartridge wherein the first biodegradable element and one of the second biodegradable elements are attached to each other in an end-to-end abutment with a wrapper, wherein the wrapper is a paper wrapper, further comprising a wrapper at least partially surrounding the first biodegradable element, further comprising a wrapper at least partially surrounding one of the two second biodegradable elements as taught by Chong because Chong demonstrates that a paper wrapper is capable of retaining the positions of its internal components (Chong, [0086]), and this involves combining prior art elements according to known methods to yield predictable results.
Regarding Claim 30, Simpson in view of Chong teaches biodegradable cartridge according to claim 13. Simpson further teaches the cartridge wherein the second biodegradable elements are made of a material that is air permeable or have a structure that is air permeable ([0166], The insert functioning as the stopper insert 38 may also be paper folded longitudinally, adapted to have a slightly larger diameter than the single tube 30 when unconstructed, folded into a W, S, N, or other configurations such that the multi-pleated material naturally pushes against the walls of the single tube, forming a compression fit and holding the stopper insert in place. This structure is necessarily air permeable).
Claims 20, 37-38, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Simpson (US 2021/0244085 A1) in view of Chong (US 2022/0202091 A1) as applied to Claim 13, and further in view of Besso (US 2022/0192252 A1).
Regarding Claims 20 and 41, Simpson in view of Chong teaches the biodegradable cartridge according to claim 13, but does not teach the cartridge wherein a third element is provided to the second end of the elongated cartridge such that a periphery of the second end is larger than a periphery of the first end of the elongated cartridge, and the periphery of the second end is 5 % to 40 % larger than the periphery of the first end of the elongated cartridge.
Besso, directed to vaporizable substrates ([0001]-[0003]), teaches a cartridge for a vapour system ([0162], Fig. 1; Aerosol-generating article 10 comprises an upstream segment, which comprises an aerosol-forming substrate 13, and a downstream segment 14, which in this embodiment consists of a filter 15),
wherein the cartridge a first element having elongated cylindrical shape having a cavity ([0162], Fig. 1; Aerosol-generating article 10 comprises an upstream segment, which comprises an aerosol-forming substrate 13. The tubular aerosol-forming substrate 13 has a substrate outer surface 17 having a substrate outer diameter D2 and a substrate inner surface 18 having a substrate inner diameter D3; and [0070], the aerosol-generating article may comprise a wrapper circumscribing the upstream segment. The wrapper around the upstream segment forms a first element having elongated cylindrical shape having a cavity housing the aerosol forming substrate 13),
the cartridge comprising a first end, and a second end ([0162], Fig. 1; Aerosol-generating article 10 comprising an upstream end 11 (first end) and a downstream end 12 (second end)),
wherein a third element is provided to the second end of the elongated cartridge such that a periphery of the second end is larger than a periphery of the first end of the elongated cartridge, and the periphery of the second end is 5 % to 40 % larger than the periphery of the first end of the elongated cartridge ([0162], Fig. 1; Aerosol-generating article 10 comprises an upstream segment, which comprises an aerosol-forming substrate 13, and a downstream segment 14 (third element), which in this embodiment consists of a filter 15. The filter 15 has an outer cylindrical surface with a downstream segment outer diameter D1. Aerosol-forming substrate 13 has a substrate outer surface 17 having a substrate outer diameter D2; and [0163] The outer diameter D1 of the filter is greater than the outer diameter D2 of the substrate; and [0045], The substrate outer diameter D2 may be between about 50% and about 98% of the downstream segment outer diameter D1; The downstream segment outer diameter D1 (diameter of first upstream end 11) is 2.04% to 100% larger than the substrate outer diameter D2 (diameter of second downstream end 12); As the periphery (circumference) is a circle is directly correlated with the diameter, the ratio provided overlaps the claimed ratio of the periphery of the second end to the periphery of the first end).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the cartridge of Simson wherein a third element is provided to the second end of the elongated cartridge such that a periphery of the second end is larger than a periphery of the first end of the elongated cartridge, and the periphery of the second end is 5 % to 40 % larger than the periphery of the first end of the elongated cartridge as taught by Besso because Simpson and Besso are directed to vaporizable substrates, Besso demonstrates that providing a second end (mouth end) which is larger than the first end (distal end) allows the filter/mouthpiece to be larger than the smokable material portion such that heat propagates rapidly through the smokable material (Besso, [0022]), and this involves combining prior art element according to known methods to yield predictable results.
Regarding Claim 37, Simpson in view of Chong and Besso teaches the biodegradable cartridge according to claim 20. Besso further teaches the cartridge wherein the third element is a sheet wrapped around the second end of the cartridge ([0162], Fig. 1; Aerosol-generating article 10 comprises an upstream segment, which comprises an aerosol-forming substrate 13, and a downstream segment 14, which in this embodiment consists of a filter 15; and [0071], the aerosol-generating article may comprise a wrapper (sheet) circumscribing the downstream segment located at the downstream end 12 (second end)).
Regarding Claim 38, Simpson in view of Chong and Besso teaches the biodegradable cartridge according to claim 20. Besso further teaches the cartridge wherein the third element is a cap encasing the second end of the cartridge ([0035], [0162], Fig. 1; Aerosol-generating article 10 comprises an upstream segment, which comprises an aerosol-forming substrate 13, and a downstream segment 14, which in this embodiment consists of a filter 15 encasing a downstream end of downstream segment 14).
Claims 28-29, and 31-36 are rejected under 35 U.S.C. 103 as being unpatentable over Simpson (US 2021/0244085 A1) in view of Chong (US 2022/0202091 A1) as applied to Claim 13, and further in view of Zepp (US 8,251,072 B2).
Regarding Claims 28-29, and 31-33, Simpson in view of Chong teaches biodegradable cartridge according to claim 13. Simpson further teaches the cartridge wherein the first biodegradable element is tubular ([0165], Figs. 6B, 6D, 6F, and 6H; Cartridge 10 comprises a single tube 30 (first biodegradable element),
but does not teach the cartridge wherein the second biodegradable element at the first end of the cartridge closes the first end of the cavity, wherein the second biodegradable element at the second end of the cartridge closes the second end of the cavity, wherein the second biodegradable elements are filter plugs, wherein the second biodegradable elements are made of a material that is porous and has a sponge-like microstructure, and the second biodegradable elements are end plugs for the first biodegradable element.
Zepp, directed to vaporizable substrates (col 1, ln 5-10; and col 2, ln 34-42; Tobacco is vaporizable), teaches a smoking article comprising: a first biodegradable element forming a cavity (col 4, ln 12-23, Fig. 2; One shot cigarette system 10 (smoking article) is comprised of a plurality of components. First provided is a wrapper 14 (first biodegradable element). The wrapper is fabricated of a biodegradable paper material. The wrapper is shaped into a cylindrical configuration. The wrapper forms a major chamber 16 (cavity)); and
a second biodegradable filter element closing an end of the cavity, wherein the second biodegradable element is made of a material that is porous and has a sponge-like microstructure, and the second biodegradable elements is an end plug for the first biodegradable element (col 5, ln 10, Fig. 2; One shot cigarette system 10 (smoking article) comprises a filter 32 closing the mouth end of the major chamber 16 (cavity). The filter is fabricated of a biodegradable porous material).
It would have been obvious to one of ordinary skill in the art to replace the second biodegradable elements of Simpson with the second biodegradable elements of Zepp such that the second biodegradable element at the first end of the cartridge closes the first end of the cavity, the second biodegradable element at the second end of the cartridge closes the second end of the cavity, the second biodegradable elements are filter plugs, the second biodegradable elements are made of a material that is porous and has a sponge-like microstructure, and the second biodegradable elements are end plugs for the first biodegradable element because Simpson demonstrates that the second biodegradable element is a filtration element (Simpson, [0165]-[0166], Folded paper within the cavity 36 forms a filter), Zepp discloses a porous biodegradable filter element capable of filtering aerosols (Zepp, col 5, ln 1-5), and this involves substituting one filter element for another to yield predictable results.
Regarding Claim 34, Simpson in view of Chong and Zepp teaches biodegradable cartridge according to claim 33 but does not teach the cartridge wherein each of the second biodegradable elements has a diameter smaller than a diameter of the first biodegradable element.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the cartridge wherein each of the second biodegradable elements has a diameter smaller than a diameter of the first biodegradable element because each of the second biodegradable elements is configured to be retained within the first biodegradable element (Simpson, [0165], FIGS. 6B, 6D, 6F, and 6H; Stopper insert 38 (second biodegradable element) has been inserted into the cavity 36 of single tube 30), and this involves changing the relative sizes of two components. The change in size, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV A.
Regarding Claim 35-36, Simpson in view of Chong and Zepp teaches biodegradable cartridge according to claim 33. Simpson further teaches the cartridge wherein two elements can be secured using a binder or glue ([0012]),
but does not teach the cartridge wherein the at least one of the second biodegradable elements is secured to the inner wall of the first biodegradable element with a binder or a glue.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the cartridge wherein the at least one of the second biodegradable elements is secured to the inner wall of the first biodegradable element with a binder or a glue because Simpson demonstrates that the second biodegradable elements are not configured to move relative to the first biodegradable element (Simpson, [0165], Figs. 6B), and Simpson demonstrates that two elements can be secured using a binder or glue (Simpson, [0012]).
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 JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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