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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/27/2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 6/27/2025.
Claim 16 is amended.
Claims 1-15 and 20 are cancelled.
Claims 16-19 and 21-30 are pending.
Response to Arguments
Applicant' s arguments, see pages 6-7, filed 6/27/2025, with respect to the rejection of claims 16-19, 21-25, and 27-30 under 35 U.S.C § 103 as being unpatentable over Han in view of Sebastian have been fully considered and are persuasive. The Applicant has amended claim 16 to include the limitation “wherein the hollow tube segment comprises…at least about 5 percent by weight of polyethylene glycol (PEG).” 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 Therefore, the rejection has been withdrawn.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 16-19, 21-25, and 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 Sebastian et al. (US 2014/0096783; of record), Marshall et al. (US 2011/0094526), and Sampson et al. (US 2013/0137561).
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 hollow tube segment comprises at least about 25 percent by weight of the PHA polymer of copolymer; and 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.
Sebastian teaches a filter material for a filter element of a smoking article (title). Sebastian teaches that conventional filter elements comprising a cellulose acetate tow, although characterized as biodegradable, may require an undesirably long time to actually biodegrade ([0005]). Sebastian solves such a problem (see [0008]) by combining a first plurality of cellulose acetate fibers with a second plurality of fibers ([0009]), wherein the second plurality of fibers comprise a degradable polymeric material such as polyhydroxyalkanoate ([0011; “fibers comprising a PHA polymer”]), and wherein the weight ratio of the first plurality of cellulose acetate fibers to the second plurality of fibers is about 1:99 to about 99:1 ([0031]). Moreover, Sebastian teaches that in certain embodiments, it can be desirable to maximize the degradable input so as to maximize the degradability of the resulting product ([0032]) and that in certain embodiments, a certain level of cellulose acetate is advantageously maintained to ensure sufficient plasticization as well as taste and filtration properties ([0032]).
Thus, Sebastian suggests that the concentrations/amounts of the degradable input, such as PHA, and cellulose acetate are result effective variables that affect the degradability of the whole product as well as the plasticization, taste, and filtration property of the entire product.
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 be a mixture of cellulose acetate fibers and second fibers, including PHA fibers, in a weight ratio of about 1:99 to about 99:1 in order to enhance biodegradability of the filter while still providing the desirable taste and filtration properties associated with conventional cigarette filters (Sebastian; [0008]).
Moreover, it would have been obvious to said skilled artisan to have changed the amounts/concentrations of cellulose acetate and PHA fibers to obtain various amounts biodegradability, plasticization, taste, and filtration because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 II(B)).
Regarding the claim limitation “wherein the hollow tube segment comprises at least about 25 percent by weight of the PHA polymer or copolymer,” modified Han discloses that the cellulose acetate fibers to PHA fibers is in a weight ratio of about 1:99 to about 99:1. Weight ratios of 75:25 to 1:99 would include “at least about 25 percent by weight of the PHA polymer.” 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).
Moreover, modified Han is silent as to wherein the hollow tube segment comprises at least about 5 percent by weight of polyethylene glycol (PEG).
Marshall teaches a biodegradable cigarette filter tow (abstract) comprising filaments of cellulose acetate (abstract), and further comprise one or more further thermoplastic materials such as polyhydroxyalkanoates such as PHB and/or PHVB ([0023]), wherein other functional additives may include polyethylene glycol for functional purposes such as modification of absorption and/or taste profile, degradation enhancement, and processability improvement, in connection for example with wet strength ([0023]).
Sampson teaches a filter additive (abstract) which uses a solid additive that re-solidifies at room temperature and bonds parts of the filter material together ([0030]), wherein the solid additive is polyethylene glycol (PEG) 600 and higher ([0033]), and wherein the PEG may be included in the filter material in an amount of preferably about 5-10% by weight of the filter element ([0036]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have added polyethylene glycol as in Marshall and Sampson to modified Han’s first filter segment in order to modify functional properties such as absorption of the first filter segment (Marshall; [0023]) with the additional benefit of providing selective removal of semi-volatile compounds with a higher molecular weight polyethylene glycol (Sampson; [0034]). Moreover, it would have been obvious to said skilled artisan to have modified the amount of high molecular weight polyethylene glycol to be in the range of 5-10% by weight as in Sampson of the weight of the first filter segment of modified Han in order to adjust the removal of the semi-volatile compounds to desirable level without having a detrimental effect on the cellulose acetate (Sampson; [0035]) while further enhancing the biodegradability of the product (Sampson; [0037]).
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,” the Examiner contends that aerosol generating article of modified Han would include multiple configurations where the level of cellulose acetate in entire article is equal to or below 10 percent by weight cellulose acetate. For example, where the weight ratio of cellulose acetate to PHA is in the range of about 5:95 to about 1:99 (i.e., the first filter segment 321 and the second filter segment 323 each contain 1-5% cellulose acetate and 95-99% PHA), which is included in Sebastian’s taught range, the total amount of cellulose acetate would not exceed 10% cellulose acetate (considering a first situation where the weight of first and second filter segments dominates and consideration a second situation where the weight of the wrappers, tobacco rod, and cooling element dominates). Since the tobacco rod and cooling structure contain no cellulose acetate, the total amount of cellulose acetate would be decreased to much lower than 10% cellulose acetate. Thus, modified Han’s aerosol generating article, when the first and second filter segments are modified to have a 5:95 to 1:99 weight ratio of cellulose acetate to PHA, would be expected to have a total weight of cellulose acetate that is much lower than 10% cellulose acetate. Moreover, one of skill in the art would be further motivated to optimize the concentrations/amounts of PHA and cellulose acetate, respectively, in order to obtain an aerosol generating article having different amounts of degradability, plasticization, taste, and filtration properties.
Regarding claims 17-18, modified Han discloses that the cellulose acetate fibers to PHA fibers is in a weight ratio of about 1:99 to about 99:1 (Sebastian; [0031]). Weight ratios of 15:85 and 10:90 to 1:99 would include “at least about 85 percent” and “at least about 90 percent by weight of the PHA polymer.” 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 19, modified Han discloses that the cellulose acetate fibers to PHA fibers is in a weight ratio of about 1:99 to about 99:1 (Sebastian; [0031]). Weight ratios of 5:95 and 10:90 to 75:25 would include “at least about 5 percent” and “at least about 90 percent by weight of fibers comprising cellulose acetate.” 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 claims 21-22, modified Han discloses that the cellulose acetate fibers to PHA fibers is in a weight ratio of about 1:99 to about 99:1 (Sebastian; [0031]), wherein the second fibers further include starch, polybutylene succinate (PBS), cellulose acetate fibers imbedded starch particles, polycaprolactone (PCL), polyvinyl alcohol, regenerated cellulose, and proteins, and copolymers and blends thereof (Sebastian; [0011], [0067], [0068]).
Regarding claim 23, modified Han discloses that the hardness of the first filter segment may be adjusted by adjusting the content of a plasticizer during fabrication ([0353]).
Thus, Han establishes that the amount of plasticizer is a result effective variable that affects the hardness of the filter segment.
However, modified Han is silent as to at least about 3 percent by weight of a plasticizer selected from triacetin, triethylene glycol diacetate (TEGDA), ethylene vinyl acetate, polyvinyl alcohol, starch, or combinations thereof.
Sebastian further teaches using a suitable plasticizer, such as, for example, triacetin, to maintain or enhance the flavor or other characteristics of the smoke expected by smokers/users ([0035]; see also [0005]).
It would have been obvious to said skilled artisan to have used triacetin as in Sebastian as the plasticizer of Han in order to maintain or enhance the flavor produced by Han’s cigarette (Sebastian; [0035]). Moreover, it would have been obvious to change the content of the triacetin to obtain various amounts filter hardness because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 II(B)).
Regarding claim 24, modified Han discloses the cellulose acetate and second fibers including PHA fibers are in a mixed fiber tow having a denier per filament (dpf) of about 3 to about 5 (Sebastian; [0012]).
Regarding claim 25, modified Han discloses that the first plurality of cellulose acetate fibers and the second plurality of fibers including PHA fibers are crimped to form a mixed fiber tow (Sebastian; [0009]).
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 discloses that the radial hardness of the filter element will be at least about 90% (Sebastian; [0014], [0049]).
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 Sebastian et al., Marshall et al., and Sampson et al. (US 2013/0137561) 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hu (CN 109674087) teaches a cigarette filter comprising a poly-based filter material with excellent biodegradability including poly-3-hydroxybutyrate, and a microcapsule phase-changing material including polyethylene glycol wherein the polyethylene glycol acts as a phase change material with a high latent heat to reduce harmful materials in the mainstream smoke.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Y 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.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755