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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 November 2025 has been entered.
Status of the Claims
Claims 14-24 are pending and subject to this Office Action. Claim 14 has been amended.
Response to Arguments
Applicant’s arguments, see pages 5-11, filed 28 November 2025 with respect to the rejections of claims 14-24 under USC §103 have been fully considered and are not persuasive.
Claim 14 has been amended to add the limitation: can capture and retain a greater proportion of water from the aerosol than an equivalent filter segment formed of cellulose acetate tow.
On page 6, Applicant argues that Sebastian does not teach many of the claimed features of the claimed invention.
The Examiner respectfully disagrees. Sebastian teaches aerosol generating article with a filter segment, in axial alignment with the article, containing at least 20% polyhydroxyalkanoate (PHA), having a denier per filament between 5 and 12 dpf, and that the selection of fibers for the filter material can be selected to improve biodegradability, improved particulate filtration, improved vapor absorption, and/or any other beneficial aspect associated with the fibers. [0073] Sebastian further teaches that the fibers used in the filter element can be adjusted to obtain a desired level of filtration efficiency. [0063]
The Examiner acknowledges that Sebastian does not teach or disclose the aerosol former content or the resistance to draw across an individual filter segment as this particular art of Sebastian is focused on the composition of the material for a biodegradable filter element. Thus the teachings of Wang, Seitert, and Guyard are used to teach the portions of the filter element that Sebastian was silent to disclosing or teaching.
On page 6-8, Applicant argues that the argument of routine optimization is insufficient to combine the teachings of Sebastian and Yang.
The Examiner disagrees with this assertion. As discussed above, Sebastian specifically teaches that the fiber selection can be used to improve fundamental characteristics of the filter element which include filtration efficiency. These teachings of Sebastian would lead a person of ordinary skill to look to other art to determine the means by which these adjustments would be made. Yang is used to teach that is known in the art that adjustments to the fiber surface area would be considered when trying to optimize the filter section resistance to draw.
On pages 8-10, the Applicant argues that the Examiner bears the initial burden to establish prima facie obviousness of the claims and that the claims are enabled.
The Examiner notes that the Examiner never rejected the claims under an enablement rejection and merely mentioned that if the prior art filter, which is compositionally and structurally equivalent to the claimed filter, was to be argued as incapable of said claimed function, then the claims are most likely not enabled or omit essential subject matter that allows the claimed filter to capture and retain water whereas the prior art filter would not be. It would appear that the ability of the filter to capture and retain a greater proportion of water form aerosol than an equivalent filter segment formed of cellulose acetate tow would be based on the composition of the filter since it would be assumed that an equivalent filter segment made of cellulose acetate tow is structurally equivalent to the claimed filter segment.
The Examiner agrees that the Examiner bears the initial burden to establish prima facie obviousness of the claims and in doing so the Examiner presented a combination of references that resulted in a filter that was compositionally and structurally equivalent to the claimed filter (see rejection below). Given the showing of equivalence, the Examiner may take the position that one of ordinary skill would reasonably conclude that the prior art filter would function in a similar manner ass the claimed filter, specifically capture and retain a greater proportion of water from the aerosol than an equivalent filter segment formed of cellulose acetate tow, absent evidence to the contrary. Then, the PTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of the Applicant’s claimed product, thus shifting the burden to the Applicant to show that the product of the prior art is not equivalent to the structure or material claimed. See MPEP 2112.01.
Therefore, the Examiner has provided a prima facie case of obviousness that the prior art filter segment is equivalent to the claimed filter segment both structurally and compositionally as claimed, and thus it would follow the prior art filter would have similar functions/properties to capture and retain water as claimed. The Examiner did not and does not reject the claims under 112(a) at this time, but notes that if the Applicant were to argue that the prior art filter that is compositionally and structurally equivalent to the claimed filter is unable to capture and retain a greater proportion of water similarly as claimed, then a rejection under 112(a) may be warranted as one would not know, without undue experimentations, which embodiments of the claimed filter would result in the claimed ability to capture and retain greater proportions of water.
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.
Claims 14, 17, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian, et al (US20140096783A1) and further in view of Wang (US20190343170A1), Seitert, et al (US20080029114A1), and Guyard, et al (US20190297937A1).
Regarding claim 14, Sebastian teaches An aerosol-generating article, comprising:
• an aerosol-generating substrate; “smoking article comprising a tobacco rod” (Abstract)
• and a filter in axial alignment with the aerosol-generating substrate, the filter comprising at least one filter segment of filtration material formed of a plurality of fibres comprising a polyhydroxyalkanoate compound,
Sebastian teaches a smoking article such as a cigarette that has a rod-shapes structure that contains a smokable material that is aligned in an end-to-end relationship with a filter element. [0004] The prior art teaches that a degradable filter comprised of a mixed fiber tow [0008] that is a combination of a first plurality of fibers combined with a second plurality of fibers.[0009] The first plurality of fibers are cellulose acetate fibers [0010] and the second plurality of fibers can be selected from a list degradable polymeric material which includes aliphatic polyesters (e.g., polylactic acid or a polyhydroxyalkanoate and regenerated cellulose material). [0011]
• wherein the fibres have a denier per filament (dpf) of between 5.0 dpf and 12.0 dpf, The prior art teaches that the mixed fiber tow typically has a denier per filament of about 3 to 5 [0012]; however, Sebastian goes on to teach a range of possible denier per filament being in the range of 1 to 15 in order to achieve the desired pressure drop across the filter element made from the fibers. [0030] The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
wherein the at least one filter segment comprises at least 20 percent by weight of the polyhydroxyalkanoate compound,
Sebastian teaches the proportions of the first plurality of fibers and the second plurality of fibers. The prior art discloses that the ratios or proportions are calculated by weight and that the first fibers (cellulose acetate) and the second fibers (regenerated cellulose fibers or polyhydroxyalkanoate) can have a ratio of 30:70 all the way to 70:30. [0031] A person having ordinary skill would recognize that the sum of the ratios as taught by Sebastian equals 100 and as such the ratios could also be considered percentages. As such, the range, as taught by Sebastian, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Sebastian is silent with respect to the aerosol generating substrate comprising at least 10 percent by weight of an aerosol former.
The prior fails to teach the specifics of the smokable rod only teaching the rod can include tobacco materials and other smokable materials. [0051]
Wang, directed to the design of cigarettes, teaches a dual-use cigarette (conventional combustion and HNB) that is comprised of raw tobacco materials combined with propylene glycol and vegetable glycerin and that the percent by weight of the tobacco material is between 5% and 50%. (Abstract, [0005]-[0007]) 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 Sebastian by using a tobacco rod with an aerosol forming content as taught by Wang because both Sebastian and Wang are directed to the smoking articles comprised of tobacco rods, Wang teaches using a tobacco composition prevents the sour odor that can be imparted by water in the tobacco [0003] and provide a smoking experience close to that of a traditional cigarette [0002],and this involves combining prior art elements of the tobacco formulation according to known methods to yield predictable results.
Sebastian is silent with respect to a resistance to draw (RTD) of the at least one filter segment is between 10 millimetres H20 and 25 millimetres H20.
Sebastian teaches an exemplary resistance to draw/pressure drop of between 50mm of water and 200 mm of water. [0062] The prior art also teaches that the denier per filament can be altered to achieve the desired pressure drop across the filter element.[0030]
Seitert, directed to the design of smoking article filters, teaches “the mouth end segment has a resistance to draw of about 20 mm WG or less .” (p1 [0013]) Seitert teaches the resistance to draw for one segment that is 20 mm of water or less which reads on the claim limitation.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sebastian by altering the denier per filament to create a filter having a resistance to draw of a mouth end segment (filter element) as taught by Seitert because both Sebastian and Seitert are directed to the design of smoking article filters, Seitert teaches “The mouth end segment is used to balance the overall resistance to draw of the multi-component filter of the present invention in order to achieve a desired overall resistance to draw for a smoking article comprising the multi-component filter.”(p1 [0016]), and this involves applying a known technique of configuring a filter resistance to draw to a known product ready for improvement to yield predictable results.
Sebastian teaches that the fibers of the filter element can be combined and adjusted to a desired level or the filtration efficiency with respect to specific solid and that by combining different fiber types in the same filter element, the filter element incorporated within a cigarette can achieve the desired function to include filtration efficiency while providing the user with acceptable taste characteristics typically associated with traditional cellulose acetate-based filter elements.[0063] However, Sebastian is silent as to the possible level of filtration that would be desired.
Seitert teaches that the mouth end filter segment, discussed above, can have “substantially no particulate phase filtration efficiency or very low particulate phase filtration efficiency.” [0012] and that this is part of the design that is used to help balance the overall resistance to draw. A person having ordinary skill would recognize that very low or no particulate phase filtration efficiency would be less than 50% filtration efficiency.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sebastian by having a mouth end filter segment with very little to no filtration efficiency as taught by Seitert because both Sebastian and Seitert are directed to the design of smoking article filters, Seitert teaches the use of a filter element segment with little to no filtration efficiency help to overall resistance to draw across the entire length of the filter element, and this involves applying a known technique of using a filter segment with a low filtration efficiency to reduce the overall resistance to draw to a known product ready for improvement to yield predictable results.
Sebastian and Seitert fail to teach the filter comprises a support element in the form of a hollow tubular element downstream of the aerosol generating substrate.
Guyard, directed to the design smoking articles, teaches a support element that is
located immediately downstream of the aerosol generating material and that the support
element is a hollow cellulose acetate tube. [0076]
Therefore, before the effective filing date of the claimed invention, it would be obvious
for one having ordinary skill in the art to modify Sebastian, Seitert, and Wang by adding a hollow tubular section as taught by Guyard because Sebastian, Seitert, Wang and Guyard are directed to smoking articles comprised of tobacco rods, Guyard teaches this support element acts as a spacer between the substrate and the rest of the filter [0076]],and this involves combining prior art elements of the tobacco formulation according to known methods to yield predictable results.
Sebastian teaches that the fibers of the filter element can be combined and adjusted to a desired level or the filtration efficiency with respect to specific solid and that by combining different fiber types in the same filter element, the filter element incorporated within a cigarette can achieve the desired function to include filtration efficiency while providing the user with acceptable taste characteristics typically associated with traditional cellulose acetate-based filter elements.[0063] Seitert teach that the filter, either as a whole or a segment, can have low filtration efficiency,
The prior art of Sebastian, Seitert, and Guyard do not explicitly teach that the filter element can capture and retain a greater proportion of water from the aerosol than an equivalent filter segment made of cellulose acetate tow. Sebastian does teach that the selection of fibers for the filter material can be selected to improve biodegradability, improved particulate filtration, improved vapor absorption, and/or any other beneficial aspect associated with the fibers. [0073]
The ability to capture and retain a greater proportion of water from the aerosol than an equivalent filter segment formed of cellulose acetate tow would be based on the materials of which the filter element is comprised. Sebastian in view of Seitert, and Guyard teaches an aerosol generating article with a filter segment containing at least 20% polyhydroxyalkanoate (PHA), having a denier per filament between 5 and 12 dpf, a resistance to draw (RTD) of 10-25 mm H2O, and little to no filtration efficiency.
Merely claiming a result of a filter in use does not distinguish the article or filter segment from the prior art. A filter segment having a similar features, including the amount of PHA and an overlapping RTD, would function in a similar manner as the claimed filter segment and would similarly capture and retain a greater proportion of water than a filter segment made purely of cellulose acetate tow, absent evidence to the contrary.
Regarding claim 17, wherein a total denier of the fibres is between 15,000 and 30,000.
Sebastian teaches that the fiber tow typically has a total denier in the range of about 20,000 denier to about 80,000 denier. [0012] This range, as taught by Sebastian, overlaps the range of the instant claim.
Regarding claim 18, Sebastian teaches wherein the filtration material further comprises a plurality of fibres of at least one additional, biodegradable polymer.
As discussed in claim 14, Sebastian teaches that the filtration material is a mixed fiber tow comprised of a first plurality of fibers that are cellulose acetate and a second plurality of fibers that are selected from a list of degradable fibers, including biodegradable polymers. [0011]
Regarding claim 20, Sebastian teaches where the at least one filter segment has an average radial hardness of at least 80 percent.
Sebastian teaches that the hardness of the filter element will be at least about 90% [0014] and provides exemplary data from testing of tested filters having a hardness ranging from 86.9% to 95% (Table2) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian, et al (US20140096783A1), Wang (US20190343170A1), Seitert, et al (US20080029114A1), and Guyard, et al (US20190297937A1). as applied to claim 14 and further in view of Yang (Filtration efficiency of a cigarette filter with X- or Y-shaped fibers, 2019)
Regarding claim 15, Sebastian teaches that the plurality of fibres have a round cross-sectional shape
Sebastian teaches that the shape of the individual filament cross-section can include a circular shape which is considered to read on the round cross-sectional shape [0030]
Sebastian fail to teach: a total external surface area within the filter segment of between 0.08 square meters per gram and 0.12 square meters per gram.
Yang, directed to the study of cigarette filtration efficiency, teaches “Filtration efficiency of nicotine depends upon two factors, one is the fiber’s surface area, and the other is the intake rate” (p2520 ln 1-2)
Though Sebastian fails to teach the total external surface area within the filter segment, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the total external surface area within the filter segment since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed total internal surface area within the filter is critical and has unexpected results. In the present invention, one would have been motivated to optimize the total external surface area within the filter segment motivated by the desire to increase the filtration efficiency.
Regarding claim 16, , Sebastian teaches that the plurality of fibres have a Y-shaped cross-sectional shape
Sebastian, directed to the design of a biodegradable cigarette filter, teaches the filament shapes can be multilobal which includes a filament that would have a y-shaped cross-section. [0030]
Sebastian fails to teach a total external surface area within the filter segment of between 0.15 square meters per gram and 0.21 square meters per gram.
Yang, directed to the study of cigarette filtration efficiency, teaches “Filtration efficiency of nicotine depends upon two factors, one is the fiber’s surface area, and the other is the intake rate” (p2520 ln 1-2)
Though Sebastian fails to teach the total external surface area within the filter segment, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the total external surface area within the filter segment since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed total internal surface area within the filter is critical and has unexpected results. In the present invention, one would have been motivated to optimize the total external surface area within the filter segment motivated by the desire to increase the filtration efficiency.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian, et al (US20140096783A1), Wang (US20190343170A1), Seitert, et al (US20080029114A1), and Guyard, et al (US20190297937A1). as applied to claim 14 and further in view of Nappi (US20160270437A1) .
Regarding claim 19, Sebastian does not teach wherein the at least one filter segment further comprises at least 5 percent by weight of polyethylene glycol.
Sebastian teaches cellulose acetate tow is generally plasticized with an appropriate plasticizer; however, the prior art only discusses the use of triacetin and does not discuss other possible plasticizers.
Nappi, directed to the design of cigarettes with degradable filters, teaches “Suitable plasticizers for use in the present invention would be well known to the skilled person and may be selected from the plasticizers that are conventionally used for cellulose acetate tow. Examples of suitable plasticizers include triacetin, triethyl citrate and polyethylene glycol.” (p2 [0027]) and “Preferably, the fibrous filter segment includes between about 1 percent and about 15 percent by weight of the plasticizer, more preferably between about 5 percent and about 10 percent, based on the total weight of the fibrous filtration material.” (p2 [0028]) Nappi teaches that use of plasticizers is well known in the art. Nappi also teaches that the amount of plasticizer that is used in the filter segment is between 5 and 10 percent. 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 Kuersteiner and Sebastian by using polyethylene glycol in the range as taught by Nappi because Kuersteiner, Sebastian, and Nappi are directed to the design of a degradable cigarette filters, Nappi teaches that the use of the plasticizers “ensures that the inclusion of the degradable polymer into the fibres does not adversely impact the firmness of the fibrous filter segment compared to a traditional cellulose acetate tow”(p2 [0026]), and this involves the use of known technique using plasticizers in filter elements to maintain the firmness to improve similar devices in the same way.
Claims 21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian, et al (US20140096783A1), Wang (US20190343170A1), Seitert, et al (US20080029114A1), and Guyard, et al (US20190297937A1). as applied to claim 14 and further in view of Besso, et al (US20170231269A1).
Regarding claim 21, Sebastian teaches that filter element is circumscribed by a tipping material but is silent to the specifics of the at least one filter segment is circumscribed by a wrapper having a basis weight of at least 100 grams per square metre (gsm).
Besso, directed to the design of filters for smoking articles, teaches the plug wrap can have a weigh basis in the range of about 10 to 150grams per square meter.[0028] 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 Sebastian by using the filter wrapping material as taught by Besso because both Sebastian and Besso are directed to filters for smoking articles, Besso teaches using a useful amount or basis weight to create a hydrophobic plug wrap (tipping paper) [0043], and this involves (KSR rationale, for example- applying a known technique/teaching to a similar device to yield predictable results)
Regarding claim 24, Sebastian fails to teach wherein the at least one filter segment further comprises a capsule within the plurality of fibres.
Besso discloses a flavor capsule within the filter segment. ([0005];[0070]; Fig1)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sebastian by adding a flavor capsule to the filter element as taught by Kuersteiner because both Sebastian and Kuersteiner are directed to filters for smoking articles, Kuersteiner teaches by breaking the capsule the mainstream smoke can be flavored without worry about evaporation before use ([0004]-[0005]), and this involves the use of known technique to improve similar products in the same way.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian, et al (US20140096783A1), Wang (US20190343170A1), Seitert, et al (US20080029114A1), and Guyard, et al (US20190297937A1) as applied to claim 14 and further in view of Dube, et al (US20110232658A1).
Regarding claim 22, Sebastian is silent with respect to at least one filter segment is in the form of a hollow tubular element.
Dube, directed to the design of cigarette filters, teaches a filter element with a hollow region or cavity for a rupturable capsule.[0014] the prior are describes the inner hollow cavity as being a generally cylindrical cavity. ([0045], Fig 2)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sebastian by adding a hollow tube for at least part of a filter element as taught by Dube because both Sebastian and Dube are directed to filters for smoking articles, Dube teaches this hollow portion allows for the passage/insertion for the flavor capsule [0045], and this involves the use of known technique of having a hollow portion of a filter for a capsule to improve similar products in the same way.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian, et al (US20140096783A1), Wang (US20190343170A1), Seitert, et al (US20080029114A1), and Guyard, et al (US20190297937A1) as applied to claim 14 and further in view of Malgat, et al (US20160331032A1).
Regarding claim 23, Neither Sebastian nor Wang teach wherein the aerosol- generating substrate has a length of between 5 millimetres and 15 millimetres.
Sebastian teaches that the tobacco rod can have a length from 35mm to 85 mm and that short rod can be employed when smoking blends has a high packing density. [0053]
Malgat, directed to the design of aerosol generating articles with filter elements, teaches “In a preferred embodiment, the aerosol-forming substrate has a length of approximately 12 millimetres.” [0067] Malgat teaches that increasing the length of the aerosol forming substrate will increase the resistance to draw through the aerosol forming substrate [0147] and as such a person having ordinary skill would look to have the shortest length possible when trying to maintain a low resistance to draw through the aerosol generating article.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Sebastian, Guyard, and Wang by using the aerosol generating article length as taught by Malgat because Sebastian, Wang, Guyard, and Malgat are directed to the design of aerosol generating articles with filter elements, Malgat teaches that increasing the length of the aerosol forming substrate will increase the resistance to draw through the aerosol forming substrate [0147], and this involves the use of known technique to improve similar product 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