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 .
Response to Amendment
This office action is in response to Applicant’s amendment filed 3/27/2026.
Claims 16 and 21 are amended.
Claims 1-15 and 19-20 are cancelled.
Claims 16-18 and 21-30 are pending.
Response to Arguments
Applicant' s arguments, see page 7, filed 3/27/2026, with respect to the rejection(s) of claim(s) 16-19, 21-25, and 27-30 under 35 U.S.C. 103 as being unpatentable over Han in view of Sebastian, Marshall, and Sampson have been fully considered and are persuasive. Applicant has amended claim 16 to include the limitation “wherein the fibrous filtration material of the hollow tube segment has a null content of cellulose acetate.” The prior art of record fails to disclose such a limitation. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited prior art.
Claim Rejections - 35 USC § 103
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.
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 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 16-18, 21-25, 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (US 2020/0093177; of record) in view of Xue et al. (US 2009/0032037) and Wilson et al. (US 5947126).
Regarding claim 16, Han discloses a cigarette ([0001]; “aerosol generating article”) for generating an aerosol by heating an aerosol generating material ([0001]) comprising:
a tobacco rod (310; Fig. 23A-B; “rod”) containing an aerosol generating material ([0320], [0339]; “aerosol-generating substrate”), the aerosol generating material includes at least one of glycerin and propylene glycol ([0339]; “aerosol former”) in an amount of 5-40%, preferably 10-25% ([0346]), the tobacco rod having a length of about 12 mm ([0337]; “length of from 5 mm to 50 mm”); and
a first filter segment (321; “fibrous filtration material” and “support element”) having a tubular structure including a hollowness therein (Fig. 23A-B; [0351]; “hollow tube segment”) located immediately downstream of and in longitudinal alignment with the tobacco rod (Fig. 23A-B), wherein the first filter segment may be a cellulose acetate filter ([0351]);
a cooling structure (322) may include pure polylactic acid only ([0366]);
a second filter segment (323) may be a cellulose acetate filter ([0357]); and
wrappers (341-345) made of paper (see [0330]-[0333]).
Regarding the claim limitation “at least 12 percent by weight of an aerosol former,” Han discloses a preferred range of 10-25% aerosol generating material which overlaps the claimed range of “at least 12 percent by weight.” In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
However, Han is silent as to wherein the fibrous filtration material comprises fibers comprising a polyhydroxyalkanoate (PHA) polymer or copolymer, and wherein the fibrous filtration material of the hollow tube segment has a null content of cellulose acetate.
Xue teaches that it is known in the art that conventional cigarette filter plugs made of cellulose acetate fibers bonded to each other by triacetin tend to degrade slower than the paper, often contributing to the litter in the environment ([0003]). Xue fixes such a problem by providing a degradable cigarette filter (title) wherein the biodegradable cigarette filters comprise fiber bands, yarns made from biodegradable materials such as polyhydroxyalkanoates and may include shaped fiber of polyhydroxybutyrate-co-hydroxyvalerate (PHBV) (abstract; [0007]; [0015]-[0016]; “fibrous filtration material comprises fibres comprising a polyhydroxyalkanoate (PHA) copolymer” and “wherein the fibrous filtration material of the hollow tube segment has a null content of cellulose acetate”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Han’s conventional first filter segment and second filter segment, which are both made out of cellulose acetate to comprise shaped fiber of PHBV as in Xue in order to increase the surface area while reducing the material use per filter and reducing the litter from cigarettes associated with the slower degradation rate of cellulose acetate fibers (Xue; [0003], [0016]).
Moreover, modified Han is silent as to wherein the hollow tube segment comprises at least about 5 percent by weight of polyethylene glycol (PEG).
Wilson teaches an environmentally disintegrable tobacco smoke filter rod (abstract) which is not limited to the type of polymer used to make the fibers, and can include a disintegrating filter rod made from polyhydroxybutyrate (PHB) fibers, polyhydroxyvvalerbutyrate (PHBV) fibers (col. 7, ll. 11-22, i.e., species of “PHA polymer”), and wherein a fiber-to-fiber bonding agent including 90% polyethylene glycol (PEG) and 10% triacetin is used to hold fibers together and increases the filter’s rigidity (col. 4, ll. 8-45), such rigidity is a critical requirement for satisfactorily combining the filter with a tobacco column (col. 3, ll. 63-67). In one example, Wilson applies 13 wt% of the 90% PEG and 10% triacetin bonding agent to form a filter rod. (Example II, col. 8, ll. 58-67; i.e., 11.7% PEG is present in the filter, and 1.3% of triacetin is present in the filter). In another example, Wilson applies 37% of the bonding agent to the filter (Example I, col. 8, ll. 10-11; i.e., 33.3% PEG is present in the filter, and 3.7% triacetin is present in the filter).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the 13-37% of bonding agent comprising PEG as in Wilson to modified Han’s biodegradable filter because (a) Wilson explains that the bonding agent is not limited by the type of polymer used to make the fibers and also applies to PHA polymers such as PHB and PHBV (Wilson; col. 7, ll. 11-22), and (b) such a modification is critical in order to hold together the fibers in order to form the filter while also allowing disintegration in water (Wilson; col. 4, ll. 40-45).
Regarding the claim limitation “wherein the hollow tube segment comprises at least about 25 percent by weight of the PHA polymer of copolymer” modified Wilson discloses the first filter segment comprises 13 wt% bonding agent and the remaining 87% being PHBV fibers.
Regarding the claim limitation “wherein the aerosol-generating article comprises less than or equal to about 10 percent by weight of cellulose acetate measured with reference to the overall weight of the aerosol-generating article,” because Han has been modified to replace all of the cellulose acetate present in the first and second filter segments with PHBV, Han’s cigarette will contain 0 percent cellulose acetate.
Regarding claims 17-18, modified Han discloses the fibrous material comprises only the shaped fiber of polyhydroxybutyrate-co-hydroxyvalerate (PHBV) (Xue; [0007]; “fibrous filtration material further comprises at least about 85 percent by weight of fibers comprising the PHA copolymer” and “fibrous filtration material further comprises at least about 90 percent by weight of fibers comprising the PHA copolymer”).
Regarding claims 21-22, modified Han discloses that the filters may comprise fiber bands made from polycaprolactones (PCL) (Xue; [0015]) and polybutylene succinate (PBS) (Xue; [0016]).
Regarding claim 23, modified Han discloses the first filter comprising 13-37% bonding agent (Wilson, Example I and II). This means that the triacetin, which makes up 10% of the bonding agent, is present in the range of 1.3-3.7% of the filter material. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 24, modified Han does not explicitly teach wherein the fibres comprising the PHA polymer or copolymer have between 3.2 denier per filament and 5 denier per filament.
Wilson further teaches that the present invention uses a denier per filament in the range of 1.5 to 15, but is preferable to use slightly higher denier per filament to enable good firmness and easy disintegration with a more preferred range of 2-10 and most preferred range of 2 to 4 (col. 6, ll. 61-67), wherein the present invention is not limited to the type of polymer used to make the fibers and can use PHB or PHBV fibers (col. 7, ll. 11-22).
It would have been obvious to said skilled artisan to have modified Han’s filter to have a denier between 2 to 4 as suggested by Wilson in order to achieve a good firmness and easy disintegration Wilson; col. 6, ll. 61-67). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 25, modified Han discloses the fibers are drawn and crimped into tow bands (Xue; [0018]).
Regarding claim 27, modified Han discloses that the hollowness in the first filter segment has a diameter in the range of 3 to 4.5 mm ([0352]), and the cigarette has a diameter of in the range of 5 to 9 mm ([0337]). This means that the first filter segment has a thickness of 0.5 to 6 mm (5-4 and 9-3 respectively), which overlaps the claimed range of “at least about 0.3 mm or…less than or equal to about 1.5 mm, or both.” In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 28, modified Han discloses the first filter segment has a length of 4 to 30 mm ([0351]; “length of at least about 4 mm”).
Regarding claim 29, modified Han is silent as to the dry radial hardness of the hollow tube segment being at least about 90 percent.
Wilson further teaches that the present invention sues a denier per filament in the range of 1.5 to 15, but is preferable to use slightly higher denier per filament to enable good firmness and easy disintegration with a more preferred range of 2-10 and most preferred range of 2 to 4 (col. 6, ll. 61-67) and that the filter of the present invention have a Filtrona hardness of greater than 60%, and most preferably greater than 90% (col. 7, ll. 1-10), wherein the present invention is not limited to the type of polymer used to make the fibers and can use PHB or PHBV fibers (col. 7, ll. 11-22).
It would have been obvious to said skilled artisan to have modified Han’s filter to have hardness of greater than 90% as in Wilson because a good firmness/hardness/rigidity is a desirable quality for the cigarette to allow it to attach to a tobacco rod (Wilson; col. 7, ll. 1-10, col. 3, ll. 63-67).
Regarding claim 30, modified Han discloses an aerosol generating system (abstract) comprising a holder configured to generate aerosol (abstract; Fig. 1; [0102]; “aerosol-generating device”) comprising the smoking article inserted into the holder (abstract; [0102]; Fig. 22) for preventing burning of the cigarette ([0335]; see also [0002]; “heat rather than combust”).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. in view of Xue et al. and Wilson et al. as applied to claim 16 above, and further in view of Kadiric et al. (US 2018/0027870; of record).
Regarding claim 26, modified Han discloses the aerosol-generating article as discussed above with respect to claim 16, comprising the first filter segment (321) having a tubular structure including a hollowness therein (Fig. 23A-B; [0351]).
However, modified Han is silent as to wherein a resistance to draw (RTD) of the hollow tube segment is less than about 10 millimetres H2O.
Kadiric teaches a smoking article (abstract) comprising a hollow tube segment (22 Fig. 2) defining a cavity (24), the hollow tube segment exhibits an unrestricted flow, which means that the segment internally defines a channel for smoke and air to flow through and does not contain any object which may cause a local restriction of the flow of smoke or air ([0008]), wherein the hollow tube segment does not substantially contribute to increasing the RTD of the smoking article and only marginally increases the RTD by 1 to 20 mm H2O, preferably 2 to 10 mm H2O ([0016]; “RTD of the hollow tube segment is less than about 10 mm H2O”), wherein it is advantageously possible to adjust the overall RTD of the smoking article to satisfactory levels by selecting filtration materials or materials of appropriate density ([0016]).
Thus, Kadiric suggests that the material and/or density of the material are result effective variables that affect the RTD of the filter and the smoking article.
It would have been obvious to change the amount of material and/or material density of modified Han’s first filter segment to obtain various amounts RTD in the range of 2 to 10 mm H2O because “[w]here 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.” MPEP 2144.05(II)(A).
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.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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