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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/9/2026 has been entered.
Claim Interpretation
Regarding claim 13, the claim recites the limitations “first airflow pathway,” “second airflow pathway,” “such that a greater proportion of the air follows the second airflow pathway, “such that air passing from the air-permeable segment towards the aerosol-forming substrate is forced to pass into the aerosol-forming substrate,” and “to ensure that a proportion of air passing into the at least one air inlet passes through the aerosol-forming substrate following the first airflow pathway,” however, there does not appear to be any structure associated with the claimed airflow pathways or airflow conditions. The claim recites only where the air flows rather than the structures that are responsible for the air being directed in that manner. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitations will be interpreted as if air could flow through the article in the claimed manner.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 13, 16-18, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Borges (US 2016/0143355) in view of Xia (WO 2020/215972, machine translation relied upon) and Hepworth (US 12,150,473).
Regarding claim 13, Borges discloses a smoking article (abstract) having a combustible heat source (figure 1, reference numeral 4) and an aerosol forming substrate located closer to the proximal end of the article than the heat source ([0243], figure 1, reference numeral 10). A transfer element is located downstream of the aerosol forming substrate ([0243], figure 1, reference numeral 12), which is considered to meet the claim limitation of an airflow directing element, and services to cool generated aerosol [0227]. The transfer element comprises an open-ended hollow cellulose acetate tube ([0246], figure 1, reference numeral 28). The tube is considered to be an air permeable segment, and the open area is considered to be a cavity. One or more first air inlets extend from the environment into the aerosol forming substrate ([0254], figure 1, reference numeral 40). The air then passes downstream through the article including the transfer element ([0103], figure 1), which is considered to meet the claim limitation of a first airflow pathway. The smoking article also has third air inlets, which are considered to meet the claim limitation of at least one air inlet, that are located downstream of the aerosol forming substrate [0114], which are considered to define a second airflow pathway. The transfer element has a length of between about 7 mm and about 50 mm [0228]. The downstream end of the aerosol forming substrate abuts the upstream end of the transfer element (figure 1). Borges does not explicitly disclose (a) the third air inlets extending through the transfer element, (b) the cross sectional area of the open area of the transfer element being at least 30% of a total longitudinal cross sectional area of the article, (c) the third air inlets being located no more than 3 mm downstream of the distal end of the transfer element, and (d) a density of the transfer element.
Regarding (a), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to locate the third air inlets in the transfer element. One would have been motivated to do so since Borges discloses that the third air inlets are located downstream of the aerosol forming substrate and that the transfer element is downstream of the aerosol forming substrate. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding (b), Xia teaches a tobacco product (abstract) having a hollow acetate fiber tube having an inner diameter of 0.5-6.2 mm and an outer diameter of 5.3-7.7 mm [0021]. The outer wrapper has a thickness of between 0.3-1.2 mm [0025]. Xia additionally teaches that this tube reduces the smoke temperature to avoid a user burning his mouth [0032].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the transfer element of Borges with the dimensions of Xia. One would have been motivated to do so since Borges discloses that the transfer element cools aerosol and Xia teaches suitable dimensions for a hollow tube that cools smoke. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding (c), it would have been obvious to one of ordinary skill in the art to position the third air inlets no more than 3 mm downstream of the distal end of the transfer element. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding (d), Hepworth teaches an aerosol provision system (abstract) having a hollow tubular element made from filamentary tow and having a density of between at least 0.3 g/cc (column 8, lines 17-37). The tow is made from cellulose acetate (column 8, lines 49-59).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the cellulose acetate tube of modified Borges with the density of Hepworth. One would have been motivated to do so since Hepworth teaches a suitable density for forming a stable hollow cellulose acetate tube.
It is evident that air could flow through the article in the claimed manner since there are not noted obstructions to air flow within the article since Borges discloses that air flows through the aerosol forming substrate and the hollow cellulose acetate tube (figure 1).
Regarding claims 16 and 17, it is evident that air could flow in the claimed manner since Borges discloses that air flows through all of the components indicated by applicant (figure 1).
Regarding claim 18, modified Borges teaches all the claim limitations as set forth above. Borges additionally discloses that the transfer element has a length of between about 7 mm and about 50 mm [0228]. Modified Borges does not explicitly teach the third air inlets being located no more than 5 mm downstream of the distal end of the transfer element.
However, it would have been obvious to one of ordinary skill in the art to position the third air inlets no more than 5 mm downstream of the distal end of the transfer element. Rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. See MPEP § 2144.04 VI C.
Regarding claim 20, modified Borges teaches all the claim limitations as set forth above. Borges additionally discloses that the cellulose acetate tube is cylindrical [0246]. Modified Borges does not explicitly teach the open area of the tube being cylindrical.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the open area of the tube be cylindrical. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding claim 21, modified Borges teaches all the claim limitations as set forth above. Modified Borges does not explicitly teach the open area of the tube having a circular cross section.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the open area of the tube have a circular cross section. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding claim 22, modified Borges teaches all the claim limitations as set forth above. Modified Borges does not explicitly teach the cross sectional area of the open area of the transfer element being at most 40% of a total longitudinal cross sectional area of the article.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the transfer element of Borges with the dimensions of Xia. One would have been motivated to do so since Borges discloses that the transfer element cools aerosol and Xia teaches suitable dimensions for a hollow tube that cools smoke. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the first airflow pathway is defined by specific structural features required by claim 13, which produces the claimed first and second airflow pathways, (b) that the relied upon example of Borges is a comparative example, not an embodiment of the invention, (c) that the Office action asserts that Borges provides two sets of air inlets, (d) that the modifications to the cited references would not have been obvious to one of ordinary skill in the art without impermissible hindsight, and (e) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the first airflow pathway is not in any way structural element. There is no tube, or channel, that forces air to flow through it. The physical features are an air-permeable segment defining a cavity that forms an airflow-directing element and an aerosol-forming substrate. All of these components are air permeable, and one of ordinary skill in the art would not necessarily expect them to force air to flow in any particular pattern since they are all permeable in any direction. Applicant asserts that these physical features, along with air inlets in the claimed location, cause air to flow along the claimed first and second airflow pathways when the article is used, however, the airflow pathways do not have any physical structure when the device is not being used.
Regarding (b), applicant’s arguments regarding Comparative Example E are irrelevant since Borges discloses that Comparative Example E is a scenario in which the first air inlets around the periphery of the aerosol forming substrate are removed, and the only airflow into the article is through the third air inlets around the hollow tube [0261]. While this scenario may indeed produce the negative effects disclosed by Borges, this is not the scenario of modified Borges as set forth above. The Office action proposes that Borges be modified to have air inlets leading to both the aerosol forming substrate and the hollow tube. Furthermore, while it may be true that it Borges does not motivate one of ordinary skill in the art to make modification in view of Comparative Example E of Borges, in light of its status as a comparative example rather than an embodiment of the invention, nowhere does the Office action suggest that one of ordinary skill in the art would make modifications to another article in light of Borges’ disclosures regarding Comparative Example E.
Regarding (c), nowhere does Comparative Example E disclose that its article has two sets of air inlets. Furthermore, even if the article of Comparative Example E did have two sets of air inlets, such a structure is not explicitly excluded by the claims since the claims nowhere use exclusionary language such as “consisting of.”
Regarding (d), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case the cited references teach all features of the invention including motivation to combine the references.
Furthermore, applicant appears to believe that the mere recitation of the first and second airflow pathways gives rise to features that must be explicitly shown in the prior art. However, applicant has not established that the claimed physical features neccessariy give rise to air flowing along the first and second airflow pathways as claimed, since all of the cavity, aerosol-forming substrate, and air-permeable segment appear to be porous and allow airflow in any direction. Applicant has not established, by objective evidence as required by MPEP § 716, that the claimed structural features result in air flowing along the first and second airflow pathways as claimed, or that airflow along the first and second airflow pathways causes a marked improvement in the article compared the article of the prior art. Both of those showings must be made for applicant to demonstrate that the first and second airflow pathways, which themselves are unexpected results that are not apparent from the claimed structural features alone, would be patentable over the cited references.
Regarding (e), all claims, including the independent claim, are rejected as set forth above.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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