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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/21/26 has been entered.
Status of the Claims.
Claims 16-31 are pending and are subject to this office action. This office action is in response to Applicant’s amendments filed on 8/21/26.
Claims 17-22 are cancelled.
Claims 16, 23, 24, 26, and 28 are amended.
Claims 29-31 are new
Response to Arguments
Applicant’s arguments (filed 8/21/26, pages 5-6) with respect to the rejection(s) of Claims 16-28 as amended under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Saettone (US 20210015170 A1).
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), Meyer (US 20070267034 A1), and Saettone (US 20210015170 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
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)), and
wherein the filter segment has a null content of cellulose acetate (“In yet another embodiment, a PLA bi-component fiber may be formed with cellulose acetate or other cellulose esters incorporated into the outer sheath” [0023]). “A filter material, a filter made using the filter material, and or a smoking article using the filter material may include at least one bi-component fiber having a with [sic] a core having a higher melt temperature than a sheath around the core, where the sheath and core may include the same or different materials.” [0023]).
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.
Sebastian 2012 does not explicitly disclose wherein the filter segment comprises about 15 percent by weight of a polybutyrate adipate terephthalate (PBAT)/polybutylene succinate (PBS) blend and/or wherein a weight ratio of PBAT to PBS in the PBAT/PBS blend is about 1:1.
Saettone teaches a filter segment (“the aerosol-cooling element is formed by a sheet of a polymeric composition that is pleated to define a plurality of longitudinally extending channels, wherein the polymeric composition comprises at least one PHA” [0044]) which comprises:
at-least about 85 percent by weight based on a total weight of fibrous filtration material of a polyhydroxyalkanoate (PHA) polymer or copolymer (“The polymeric composition comprising the at least one PHA can be formulated according to known techniques, and can include… preferably a mixture of from 60% to 90% by weight of PHA and from 10% to 40% by weight of at least one different biodegradable/compostable polymer” [0045]) and
about 15 percent by weight of a polybutyrate adipate terephthalate (PBAT)/polybutylene succinate (PBS) blend, wherein a weight ratio of PBAT to PBS in the PBAT/PBS blend is about 1:1 (“The polymeric composition comprising… from 10% to 40% by weight of at least one different biodegradable/compostable polymer, such as polylactide (PLA), poly(butylene-co-adipate-co-terephthalate) (PBAT), poly(butylene-co-succinate) (PBS),… and mixtures thereof” [0045]. 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). When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Here, when faced with a mixture of PBAT and PBS, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio PBAT to PBS).
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 polymer composition of Sebastian 2012 with the addition of the blend of biodegradable/compostable polymers taught by Saettone because Sebastian 2012 and Saettone are both directed to filters for smoking articles, Saettone teaches the use of PHA, PBAT, and PBS as the polymers in a blend for a biodegradable/compostable polymer, and this merely involves applying a known polymeric blend component of a smoking article to a similar smoking article filter to yield predictable results.
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]).
Regarding Claim 29, Saettone further discloses an aerosol-generating article wherein the fibrous filtration material comprises crimped fibres (“the aerosol-cooling element is formed by a sheet of a polymeric composition that is pleated” [0044]) comprising the polyhydroxyalkanoate (PHA) polymer or copolymer filament. Sebastian 2012 also further discloses wherein the polyhydroxyalkanoate (PHA) polymer or copolymer has a denier per filament of about 3 (Suitable filters may comprise of fibers of at least 3 denier per filament. [0039]).
Where Claim 29 states “the fibrous filtration material comprises melt-spun… fibres,” the limitation “melt-spun” is a product-by-process limitation. Patentability of a product is based on the product itself and does not depend on the method of production. If the claimed product is the same as or obvious from the prior art, the claim is unpatentable even though the prior product may be made by a different process. See MPEP 2113(I). Here, absent evidence to the contrary, Saettone discloses an aerosol-generating article wherein the fibrous filtration material comprises crimped fibers similar to the claimed fibers.
Sebastian 2012 discloses a filter rod where the polyhydroxyalkanoate (PHA) polymer or copolymer has a total denier between 35,000 and 40,000 ([0039]). However, Meyer teaches that the total denier is a function of the denier per filament and the physical dimensions of the article, such that the total denier may range from 17,000 and 42,000 ([0051], [0055], [0063], [0065]) and further teaches adjusting the filter length, total denier, and denier per filament values to obtain different filtering properties ([0051], [0055], [0063], [0065]). 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 30, Sebastian 2012 discloses an aerosol-generating article wherein the fibres comprising the polyhydroxyalkanoate (PHA) polymer or copolymer have a substantially round cross-section (“preferred fibers may be generally cylindrical in geometry, having a round, oval, elliptical, or other rounded outer geometry” [0019]), but does not explicitly disclose where the fibers have an exposed surface area of about 0.16 square meters per gram. However, given that the fiber surface area directly effects the absorption and biodegradation properties of the fibers, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of fiber surface area. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the fiber surface area disclosed in Sebastian 2012 ([0009], [0019]), would arrive at an exposed surface area of about 0.16 square meters per gram as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Regarding Claim 31, Sebastian 2012 discloses an aerosol-generating article wherein the fibres comprising the polyhydroxyalkanoate (PHA) polymer or copolymer have a substantially round cross-section (“preferred fibers may be generally cylindrical in geometry, having a round, oval, elliptical, or other rounded outer geometry” [0019]), but does not explicitly disclose where the fibers have an external surface area between about 0.15 square meters per gram and about 0.30 square meters per gram. However, given that the fiber surface area directly effects the absorption and biodegradation properties of the fibers, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of fiber surface area. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the fiber surface area disclosed in Sebastian 2012 ([0009], [0019]), would arrive at an external surface area between about 0.15 square meters per gram and about 0.30 square meters per gram as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian 2012 in view of Meyer (US 20070267034 A1) and Saettone (US 20210015170 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
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)), and
wherein the filter segment has a null content of cellulose acetate (“In yet another embodiment, a PLA bi-component fiber may be formed with cellulose acetate or other cellulose esters incorporated into the outer sheath” [0023]). “A filter material, a filter made using the filter material, and or a smoking article using the filter material may include at least one bi-component fiber having a with [sic] a core having a higher melt temperature than a sheath around the core, where the sheath and core may include the same or different materials.” [0023]).
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.
Sebastian 2012 does not explicitly disclose wherein the filter segment comprises about 15 percent by weight of a polybutyrate adipate terephthalate (PBAT)/polybutylene succinate (PBS) blend and/or wherein a weight ratio of PBAT to PBS in the PBAT/PBS blend is about 1:1. Saettone teaches a filter segment (“the aerosol-cooling element is formed by a sheet of a polymeric composition that is pleated to define a plurality of longitudinally extending channels, wherein the polymeric composition comprises at least one PHA” [0044]) which comprises:
at-least about 85 percent by weight based on a total weight of fibrous filtration material of a polyhydroxyalkanoate (PHA) polymer or copolymer (“The polymeric composition comprising the at least one PHA can be formulated according to known techniques, and can include… preferably a mixture of from 60% to 90% by weight of PHA and from 10% to 40% by weight of at least one different biodegradable/compostable polymer” [0045]) and
about 15 percent by weight of a polybutyrate adipate terephthalate (PBAT)/polybutylene succinate (PBS) blend, wherein a weight ratio of PBAT to PBS in the PBAT/PBS blend is about 1:1 (“The polymeric composition comprising… from 10% to 40% by weight of at least one different biodegradable/compostable polymer, such as polylactide (PLA), poly(butylene-co-adipate-co-terephthalate) (PBAT), poly(butylene-co-succinate) (PBS),… and mixtures thereof” [0045]. 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). When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Here, when faced with a mixture of PBAT and PBS, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio PBAT to PBS).
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 polymer composition of Sebastian 2012 with the addition of the blend of biodegradable/compostable polymers taught by Saettone because Sebastian 2012 and Saettone are both directed to filters for smoking articles, Saettone teaches the use of PHA, PBAT, and PBS as the polymers in a blend for a biodegradable/compostable polymer, and this merely involves applying a known polymeric blend component of a smoking article to a similar smoking article filter to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights