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 Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/25/25 has been entered.
Status of the Claims.
Claims 16-28 are pending and are subject to this office action. This office action is in response to Applicant’s remarks filed on 6/25/25
Claims 1-15 remain cancelled.
Claims 16 and 28 are amended.
Response to Arguments
Applicant's arguments (filed 6/25/25, pages 6-8) have been fully considered and are persuasive. Applicant argues: none of the previously cited prior art discloses or suggest embodiments wherein the filter segment comprises polyethylene glycol in an amount of between about 3 percent and about 15 percent by weight. Therefore, the rejections in view of Sebastian (US 20140096783 A1) [Sebastian 2014]. have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sebastian (US 20120000480 A1) [Sebastian 2012].
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 16-27 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian (US 20120000480 A1) [hereinafter Sebastian 2012] in view of Han (US 20200093177 A1) and Meyer (US 20070267034 A1).
Regarding Claim 16, Sebastian 2012 discloses an aerosol-generating article for producing an inhalable aerosol upon heating ([0008]-[0009]), the aerosol-generating article comprising:
a rod of aerosol-generating substrate (The cigarette 100 includes a generally cylindrical rod 102 of smokable filler material. [0014], Fig 1),
a filter segment formed of fibrous filtration material ("Embodiments of filters in the present disclosure include biodegradable polymers or other materials, which may be formed as fibers, and often be embodied in the form of tow fibers." [0016]),
the filter segment arranged in longitudinal alignment with the rod ("A filter element 126 is disposed at the mouth end 120 of the tobacco rod 102, and the lighting end 118 is positioned at the opposite end." [0015], Fig 1),
wherein the filter segment comprises at least about 85 percent by weight based on a total weight of fibrous filtration material of a polyhydroxyalkanoate (PHA) polymer or copolymer (Polyhydroxyalkanoate (PHA) polymers are known biodegradable polymers which may be formed into fibers of acceptable strength by mixing different PHA polymers or mixing PHA polymers with other polymers. [0016]-[0018]. The polymers may be mixed to generate bi-component fibers. [0019]. "The ratio of polymer A to polymer B may range from about 90:10 to about 10:90, depending upon the fiber components selected. For example, U.S. Pat. No. 6,905,987 to Noda et al. describes PLA/PHA biodegradable bicomponent fibers where the PLA content may be varied from 10-90% of the weight of the fiber" [0021]), and
polyethylene glycol (PEG) in an amount of between about 3 percent and about 15 percent by weight (A conventional plasticizer may be coated, along with a cellulose acetate solution, onto the PHAs, PVA, or other biodegradable fiber-forming polymers. [0027]. Known plasticizers in the art include: triacetin, polyethylene glycol, and glycerin. [0005]. The total amount of plasticizer may be about 6 to about 12 percent by weight. [0040]),
wherein a resistance to draw (RTD) of the article is between about 35 millimeters H2O and about 55 millimeters H2O ("an exemplary cigarette will exhibit a pressure drop of between about 50 and about 200 mm water pressure drop at 17.5 cc/sec. air flow" [0061]), and
wherein a length of the filter segment is from about 4 millimeters to about 27 millimeters ("Typical filter elements can have total lengths of about 15 mm to about 40 mm" [0037]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Sebastian 2012 does not explicitly disclose wherein the aerosol-generating substrate comprises at least 10 percent by weight of an aerosol former. However, Han teaches an aerosol-generating article for producing an inhalable aerosol upon heating comprising: a rod of aerosol-generating substrate (tobacco rod 310. [0339], Figs 23A - B) wherein the aerosol-generating substrate comprises at least 10 percent by weight of an aerosol former (the tobacco rod may comprise an aerosol generating material such as: glycerin, propylene glycol, or triethylene glycol. [0339]. The tobacco may comprise 2% to 35% aerosol generating material. [0346]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the rod of aerosol-generating substrate of Sebastian 2012 such that the aerosol-generating substrate comprises at least 10 percent by weight of an aerosol former as taught by Han because Sebastian 2012 and Han are both directed to aerosol generating articles, Han teaches the use of an aerosol-generating former, and this merely involves applying a known aerosol forming component to a similar aerosol generating article to yield predictable results.
Sebastian 2012 does not explicitly disclose wherein an RTD of the filter segment is between about 35 millimeters H20 and about 55 millimeters H20. However, Meyer teaches that the overall resistance to draw of the smoking article may be adjusted to a desired value through variation of the filter element ([0013], [0074]) and further teaches changing the filter length, total denier, and denier per filament values to reach different RTD values ([0051], [0055], [0063], [0065]). Moreover, Meyer teaches utilizing filters with RTD values ranging from 35 mm H20 ([0063]) to 53 mm H20 ([0051]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the filter of Sebastian 2012 such that the filter has a RTD between at least 35 and 53 mm H20 as taught by Meyer because Sebastian 2012 and Meyer are both directed to filters for smoking articles, Meyer teaches the means of achieving and utilizing a filter with a RTD ranging from 35 to 53 mm H20, and this merely involves applying a known component configuration to a similar smoking filter to yield predictable results.
Regarding Claim 17, Sebastian 2012 discloses an aerosol-generating article wherein the filter segment further comprises at least about 90 percent by weight based on the total weight of fibrous filtration material of the polyhydroxyalkanoate (PHA) polymer or copolymer (In PLA/PHA biodegradable bicomponent fibers, the single fiber content may be varied from 10-90% of the weight of the total bicomponent fiber. [0021]).
Regarding Claim 18, Sebastian 2012 discloses an aerosol-generating article wherein the filter segment further comprises at least about 95 percent by weight based on the total weight of fibrous filtration material of the polyhydroxyalkanoate (PHA) polymer or copolymer (The filter may comprise of a single fiber type, such that the selected fiber comprises 100% of the filter fiber composition. [0016]).
Regarding Claims 19-21, Sebastian 2012 discloses an aerosol-generating article wherein the filter segment further comprises at least about 5 percent, at least about 10 percent, and/or less than or equal to about 15 percent by weight based on the total weight of fibrous filtration material of at least one biodegradable polymer selected from the group consisting of starch, polybutylene succinate (PBS), polybutyrate adipate terephthalate (PBAT), thermoplastic starch and thermoplastic starch blends (TPS), polycaprolactone (PCL), polyglycolide (PGA), polyvinyl alcohol (PVOH/PVA), viscose, regenerated cellulose, polysaccharides, cellulose acetate with a degree of substitution (DS) of less than 2.1, polyamides, protein-based biopolymers, chitosan-chitin based biopolymers, and combinations thereof ("Other biodegradable polymers useful within the present invention include polylactic acid (PLA), polycaprolactones, polybutylene succinate adipate, polyvinyl alcohol (PVA), starch, polyesteramide, regenerated cellulose (e.g., rayon), and various aromatic copolyesters, and any combination of these polymers, blends of such biodegradable polymers, and non-biodegradable polymers such as starch-polyolefin mixtures" [0016]. "the ratios of fiber-forming polymer mixtures may be varied to attain a balance of desirable biodegradability properties and fiber strength. The ratio of polymer A to polymer B may range from about 90:10 to about 10:90, depending upon the fiber components selected" [0021]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Regarding Claim 22, Sebastian 2012 discloses an aerosol-generating article wherein the at least one biodegradable polymer is one or more of PBAT, PCL, and PBS (Known biodegradable polymers used in filters include: polycaprolactones and polybutylene succinate adipate. [0016]).
Regarding Claim 23, Sebastian 2012 discloses an aerosol-generating article wherein the fibrous filtration material comprises a plurality of fibers comprising a polyhydroxyalkanoate (PHA) polymer or copolymer and having a denier per filament from about 1 to about 10 ("the polymers may be mixed to generate bi-component or other multi-component fibers" [0019]. The use of filter material within a filter may vary and suitable filters may range from at least 3 denier per filament to 8 denier per filament. [0039]).
Regarding Claims 24, Sebastian 2012 discloses an aerosol-generating article wherein the fibrous filtration material comprises a plurality of fibers comprising a polyhydroxyalkanoate (PHA) polymer or copolymer and having a denier per filament from about 3.2 to about 5 ("the polymers may be mixed to generate bi-component or other multi-component fibers" [0019]. Suitable filters may range from at least 3 denier per filament to 8 denier per filament. [0039]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Regarding Claim 25, Meyer teaches wherein an RTD of the filter segment is between about 40 millimetres H20 and about 50 millimetres H20 (Filters may have RTD values ranging from 35 mm H20 ([0063]) to 53 mm H20 ([0051]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Regarding Claim 26, Sebastian 2012 discloses an aerosol-generating article wherein the fibrous filtration material comprises crimped fibers comprising a polyhydroxyalkanoate (PHA) polymer or copolymer (The fibrous filament may be crimped. [0049]).
Regarding Claim 27, Sebastian 2012 discloses an aerosol-generating article wherein a diameter of the filter segment is from about 5 millimeters to about 12 millimeters (The cigarettes are rod-shaped and may have diameters of about 7.5 mm. [0037]. The filter element may have a substantially same diameter as the tobacco rod. [0015]).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian 2012 in view of Meyer (US 20070267034 A1).
Regarding Claim 28, Sebastian 2012 discloses a filter for an aerosol-generating article ([0010]), the filter comprising:
a filter segment formed of fibrous filtration material ("Embodiments of filters in the present disclosure include biodegradable polymers or other materials, which may be formed as fibers, and often be embodied in the form of tow fibers." [0016]),
the filter segment comprising at least about 85 percent by weight based on a total weight of fibrous filtration material of a polyhydroxyalkanoate (PHA) polymer or copolymer (Polyhydroxyalkanoate (PHA) polymers are known biodegradable polymers which may be formed into fibers of acceptable strength by mixing different PHA polymers or mixing PHA polymers with other polymers. [0016]-[0018]. The polymers may be mixed to generate bi-component fibers. [0019]. "The ratio of polymer A to polymer B may range from about 90:10 to about 10:90, depending upon the fiber components selected. For example, U.S. Pat. No. 6,905,987 to Noda et al. describes PLA/PHA biodegradable bicomponent fibers where the PLA content may be varied from 10-90% of the weight of the fiber" [0021]), and
polyethylene glycol (PEG) in an amount of between about 3 percent and about 15 percent by weight (A conventional plasticizer may be coated, along with a cellulose acetate solution, onto the PHAs, PVA, or other biodegradable fiber-forming polymers. [0027]. Known plasticizers in the art include: triacetin, polyethylene glycol, and glycerin. [0005]. The total amount of plasticizer may be about 6 to about 12 percent by weight. [0040]),
wherein a resistance to draw (RTD) of the filter article is between about 35 millimeters H2O and about 55 millimeters H2O ("an exemplary cigarette will exhibit a pressure drop of between about 50 and about 200 mm water pressure drop at 17.5 cc/sec. air flow" [0061]), and
wherein a length of the filter segment is from about 4 millimeters to about 27 millimeters ("Typical filter elements can have total lengths of about 15 mm to about 40 mm" [0037]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Sebastian 2012 does not explicitly disclose wherein an RTD of the filter segment is between about 35 millimeters H20 and about 55 millimeters H20. However, Meyer teaches that the overall resistance to draw of the smoking article may be adjusted to a desired value through variation of the filter element ([0013], [0074]) and further teaches changing the filter length, total denier, and denier per filament values to reach different RTD values ([0051], [0055], [0063], [0065]). Moreover, Meyer teaches utilizing filters with RTD values ranging from 35 mm H20 ([0063]) to 53 mm H20 ([0051]). A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the filter of Sebastian 2012 such that the filter has a RTD between at least 35 and 53 mm H20 as taught by Meyer because Sebastian 2012 and Meyer are both directed to filters for smoking articles, Meyer teaches the means of achieving and utilizing a filter with a RTD ranging from 35 to 53 mm H20, and this merely involves applying a known component configuration to a similar smoking filter to yield predictable results.
Conclusion
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755