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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 11, 2025 has been entered.
Status of the Claims
Claims 1-5, 7, 10-12, 15-16, 22, 24, 26-28, 35-36, 117, and 126-137 are pending and are subject to this Office Action. Claims 1-2, and 4 are amended. Claims 6, 8-9, 13-14, 17-21, 23, 25, 29-34, 37-116, 118-125 are amended. Claim 137 is new.
Response to Amendments
The amendments to the claims filed on December 11, 2025 are acknowledged.
Response to Arguments
Applicant's arguments with respect to the rejection(s) of claims 1-5, 7, 9-12, 15-16, 22, 24, 26-28, 35-36, 117, and 126-136 under 35 U.S.C. 103 have been fully considered but they are not persuasive. Applicant argues that the previously applied prior art does not disclose: “wherein the cooling segment comprises perforations and/or comprises a specific porosity to provide ventilation through the wall of the tube to cool the aerosol.” Examiner respectfully disagrees with the arguments because Claims 1, 2, ad 4 can be rejected in view of Uthurry (US 2022/0007709 A1).
Uthurry teaches an article for use in a non-combustible aerosol provision system ([0010], [0012], [0131], Fig. 1; Aerosol-generating article 10), the article comprising
an aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises a rod of aerosol-generating substrate 12) and
a downstream portion downstream of the aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises hollow tubular segment 16 downstream of the rod of aerosol-generating substrate 12),
wherein the downstream portion comprises a cooling segment comprising a cavity surrounded by a tube comprising a wall ([0131], [0134]-[0135], Fig. 1; Hollow tubular segment 16 comprises a cavity surrounded by a cylindrical tube comprising a wall. [0030]-[0031], Hollow tubular segment 16 performs the function of cooling the aerosol generating by heating the substrate),
wherein said tube has an axial length of at least 12 mm and is located adjacent to the aerosol generating material ([0070], [0131], Fig. 1; a length of the hollow tubular segment 16 is at least about 15 millimetres. [0141], Fig. 3; The aerosol-generating article 40 of FIG. 3 differs structurally from the aerosol-generating article 10 of FIG. 1 in that it does not include a hollow cellulose acetate tube 14 as a support element. In this embodiment, the hollow tubular segment 16 (tube) is adjacent to rod 12 (aerosol generating material))
wherein said tube has a wall thickness of at least 325 microns ([0131], [0135], Fig. 1; Hollow tubular segment 16 is a paper tube. [0026], A thickness of a peripheral wall of the hollow tubular segment is less than about 1.5 millimetre (1500 microns)),
wherein the aerosol generating material comprises at least 5% by weight of an aerosol-former material ([0010], [0131], Fig. 1; The rod of aerosol-generating substrate 12 has an aerosol former content of at least about 10 percent on a dry weight basis);
wherein the article is configured for use in a non-combustible aerosol provision system ([0001]-[0002], [0012]); and
wherein the cooling segment comprises perforations to provide ventilation through the wall of the tube to cool the aerosol ([0131]-[0136], Fig. 1; Aerosol-generating article 10 comprises a ventilation zone 26. [0099], The ventilation zone 26 may comprise one or more rows of perforations formed through the peripheral wall of the hollow tubular segment 16).
Applicant's arguments with respect to Election by Original Presentation of Claim 137 have been fully considered but they are not persuasive.
On pg. 8-9, Applicant argues that the Examiner cannot require an Election by Original Presentation for Claim 137 because Claim 137 does not introduce: a new field of search; a new structural device; or any claim element not already encompassed by the article claims. Examiner respectfully disagrees with the arguments because the present application is a 371 application, and MPEP section 1893.03(d) is relied upon. Therefore, the Election by Original Presentation is not dependent on whether the inventions are distinct and independent as argued, but on whether the shared technical feature is known. As such, the arguments are not persuasive.
The following is a modified rejection based on amendments made to the claims.
Election/Restriction
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1: Group I (Claims 1-5, 7, 10-12, 15-16, 22, 24, 26-28, 35-36, 117, and 126-136) is directed to an article; Group II (Claim 137) are directed to a system. Groups I and II share the technical feature of: an article comprising: an aerosol generating material and a downstream portion downstream of the aerosol generating material, wherein the downstream portion comprises a cooling segment comprising a cavity surrounded by a tube comprising a wall, and wherein said tube is a paper tube and has a wall thickness of at least 325 microns and/or the wall has a permeability of at least 100 Coresta Units, wherein the aerosol generating material comprises at least 5% by weight of an aerosol-former material. This technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Uthurry (US 2022/0007709 A1).
Uthurry teaches an article ([0010], [0131], Fig. 1; Aerosol-generating article 10), the article comprising
an aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises a rod of aerosol-generating substrate 12) and
a downstream portion downstream of the aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises hollow tubular segment 16 downstream of the rod of aerosol-generating substrate 12),
wherein the downstream portion comprises a cooling segment comprising a cavity surrounded by a tube comprising a wall ([0131], [0134]-[0135], Fig. 1; Hollow tubular segment 16 comprises a cavity surrounded by a cylindrical tube comprising a wall. [0030]-[0031], Hollow tubular segment 16 performs the function of cooling the aerosol generating by heating the substrate), and
wherein said tube is a paper tube and has a wall thickness of at least 325 microns ([0131], [0135], Fig. 1; Hollow tubular segment 16 is a paper tube. [0026], A thickness of a peripheral wall of the hollow tubular segment is less than about 1.5 millimetre (1500 microns)),
wherein the aerosol generating material comprises at least 5% by weight of an aerosol-former material ([0010], [0131], Fig. 1; The rod of aerosol-generating substrate 12 has an aerosol former content of at least about 10 percent on a dry weight basis).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 137 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1-5, 10-11, 16, 22, 24, 26-28, 35-36, 126-128, and 132-136 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (US 2022/0007709 A1).
Regarding Claim 1, Uthurry, directed to smoking articles ([0001]-[0002]), teaches an article ([0010], [0131], Fig. 1; Aerosol-generating article 10), the article comprising
an aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises a rod of aerosol-generating substrate 12) and
a downstream portion downstream of the aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises hollow tubular segment 16 downstream of the rod of aerosol-generating substrate 12),
wherein the downstream portion comprises a cooling segment comprising a cavity surrounded by a tube comprising a wall ([0131], [0134]-[0135], Fig. 1; Hollow tubular segment 16 comprises a cavity surrounded by a cylindrical tube comprising a wall. [0030]-[0031], Hollow tubular segment 16 performs the function of cooling the aerosol generating by heating the substrate), and
wherein said tube is a paper tube and has a wall thickness of at least 325 microns ([0131], [0135], Fig. 1; Hollow tubular segment 16 is a paper tube. [0026], A thickness of a peripheral wall of the hollow tubular segment is less than about 1.5 millimetre (1500 microns)),
wherein the aerosol generating material comprises at least 5% by weight of an aerosol-former material ([0010], [0131], Fig. 1; The rod of aerosol-generating substrate 12 has an aerosol former content of at least about 10 percent on a dry weight basis);
wherein the article is configured for use in a non-combustible aerosol provision system ([0001]-[0002], [0012]); and
wherein the cooling segment comprises perforations to provide ventilation through the wall of the tube to cool the aerosol ([0131]-[0136], Fig. 1; Aerosol-generating article 10 comprises a ventilation zone 26. [0099], The ventilation zone 26 may comprise one or more rows of perforations formed through the peripheral wall of the hollow tubular segment 16).
The ranges for the wall thickness and aerosol former material content disclosed by the prior art overlaps the claimed ranges, and therefore the claimed ranges are considered prima facie obvious.
Regarding Claim 2, Uthurry, directed to smoking articles ([0001]-[0002]), teaches an article ([0010], [0131], Fig. 1; Aerosol-generating article 10), the article comprising
an aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises a rod of aerosol-generating substrate 12) and
a downstream portion downstream of the aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises hollow tubular segment 16 downstream of the rod of aerosol-generating substrate 12),
wherein the downstream portion comprises a cooling segment comprising a cavity surrounded by a tube comprising a wall ([0131], [0134]-[0135], Fig. 1; Hollow tubular segment 16 comprises a cavity surrounded by a cylindrical tube comprising a wall. [0030]-[0031], Hollow tubular segment 16 performs the function of cooling the aerosol generating by heating the substrate),
wherein said tube has an axial length of at least 15 mm ([0070], [0131], Fig. 1; a length of the hollow tubular segment 16 is at least about 15 millimetres)
wherein said tube has a wall thickness of at least 325 microns ([0131], [0135], Fig. 1; Hollow tubular segment 16 is a paper tube. [0026], A thickness of a peripheral wall of the hollow tubular segment is less than about 1.5 millimetre (1500 microns)),
wherein the aerosol generating material comprises at least 5% by weight of an aerosol-former material ([0010], [0131], Fig. 1; The rod of aerosol-generating substrate 12 has an aerosol former content of at least about 10 percent on a dry weight basis);
wherein the article is configured for use in a non-combustible aerosol provision system ([0001]-[0002], [0012]); and
wherein the cooling segment comprises perforations to provide ventilation through the wall of the tube to cool the aerosol ([0131]-[0136], Fig. 1; Aerosol-generating article 10 comprises a ventilation zone 26. [0099], The ventilation zone 26 may comprise one or more rows of perforations formed through the peripheral wall of the hollow tubular segment 16).
The ranges for the wall thickness, axial length, and aerosol former material content disclosed by the prior art overlaps the claimed ranges, and therefore the claimed ranges are considered prima facie obvious.
Regarding Claim 3, Uthurry further teaches an article according to claim 1, wherein the tube is adjacent to the aerosol generating material ([0131], [0141], Figs. 1 and 3; The aerosol-generating article 40 of FIG. 3 differs structurally from the aerosol-generating article 10 of FIG. 1 in that it does not include a hollow cellulose acetate tube 14 as a support element. In this embodiment, the hollow tubular segment 16 (tube) is adjacent to rod 12 (aerosol generating material)).
Regarding Claim 4, Uthurry, directed to smoking articles ([0001]-[0002]), teaches an article for use in a non-combustible aerosol provision system ([0010], [0012], [0131], Fig. 1; Aerosol-generating article 10), the article comprising
an aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises a rod of aerosol-generating substrate 12) and
a downstream portion downstream of the aerosol generating material ([0010], [0131], Fig. 1; Aerosol-generating article 10 comprises hollow tubular segment 16 downstream of the rod of aerosol-generating substrate 12),
wherein the downstream portion comprises a cooling segment comprising a cavity surrounded by a tube comprising a wall ([0131], [0134]-[0135], Fig. 1; Hollow tubular segment 16 comprises a cavity surrounded by a cylindrical tube comprising a wall. [0030]-[0031], Hollow tubular segment 16 performs the function of cooling the aerosol generating by heating the substrate),
wherein said tube has an axial length of at least 12 mm and is located adjacent to the aerosol generating material ([0070], [0131], Fig. 1; a length of the hollow tubular segment 16 is at least about 15 millimetres. [0141], Fig. 3; The aerosol-generating article 40 of FIG. 3 differs structurally from the aerosol-generating article 10 of FIG. 1 in that it does not include a hollow cellulose acetate tube 14 as a support element. In this embodiment, the hollow tubular segment 16 (tube) is adjacent to rod 12 (aerosol generating material))
wherein said tube has a wall thickness of at least 325 microns ([0131], [0135], Fig. 1; Hollow tubular segment 16 is a paper tube. [0026], A thickness of a peripheral wall of the hollow tubular segment is less than about 1.5 millimetre (1500 microns)),
wherein the aerosol generating material comprises at least 5% by weight of an aerosol-former material ([0010], [0131], Fig. 1; The rod of aerosol-generating substrate 12 has an aerosol former content of at least about 10 percent on a dry weight basis);
wherein the article is configured for use in a non-combustible aerosol provision system ([0001]-[0002], [0012]); and
wherein the cooling segment comprises perforations to provide ventilation through the wall of the tube to cool the aerosol ([0131]-[0136], Fig. 1; Aerosol-generating article 10 comprises a ventilation zone 26. [0099], The ventilation zone 26 may comprise one or more rows of perforations formed through the peripheral wall of the hollow tubular segment 16).
The ranges for the wall thickness, axial length, and aerosol former material content disclosed by the prior art overlaps the claimed ranges, and therefore the claimed ranges are considered prima facie obvious.
Regarding Claim 5, Uthurry further teaches an article according to claim 1, wherein the tube has a wall thickness of at least 500 microns and/or less than 2000 microns ([0026], A thickness of a peripheral wall of the hollow tubular segment is less than about 1.5 millimetre (1500 microns)).
The range for the wall thickness disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claims 10-11, Uthurry further teaches an article according to claim 1, wherein the article has an upstream end and a downstream end ([0131], [0136], Fig. 1; Aerosol-generating article 10 comprises an upstream end and a downstream end),
wherein said ventilation level is provided by one or more apertures ([0090]-[0092], [0099], [0131], [0136], Fig. 1; Aerosol-generating article 10 comprising a ventilation zone 26 along hollow tubular segment 16. The ventilation zone 26 may comprise one or more rows of perforations formed through the peripheral wall of the hollow tubular segment 16. Perforations are apertures. It is reasonably understood that the perforations provide the ventilation level),
wherein the apertures are provided about 28mm or less from the upstream end of the article ([0115]-[0116], [0131], [0136], Fig. 1; Ventilation zone 26 may be located between 12 mm and 50 mm from an upstream end of aerosol-generating article 10),
wherein the tube comprises one or more ventilation holes ([0090]-[0092], [0099], [0131], [0136], Fig. 1; Aerosol-generating article 10 comprising a ventilation zone 26 along hollow tubular segment 16. The ventilation zone 26 may comprise one or more rows of perforations formed through the peripheral wall of the hollow tubular segment 16).
The range for the distance between the ventilation holes and the upstream end of the article disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 16, Uthurry further teaches an article according to claim 1, wherein the tube has an axial length of at least 12 mm ([0070], [0131], Fig. 1; a length of the hollow tubular segment 16 is at least about 15 millimetres).
The range for the axial length disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 22, Uthurry further teaches an article according to claim 1, further comprising a wrapper that circumscribes the tube ([0131], Fig. 1; Wrapper 20 circumscribes hollow tubular element 16).
Regarding Claim 24, Uthurry further teaches an article according to claim 2, wherein the tube comprises a fibrous material ([0131], [0135], Fig. 1; Hollow tubular segment 16 is a paper tube. Paper is a fibrous material (cellulose)).
Regarding Claim 26, Uthurry further teaches an article according to claim 1, wherein the tube is a continuous tube of material ([0075], [0131], Fig. 1; Hollow tubular element 16 may be a continuous tube of material).
Regarding Claim 27, Uthurry further teaches an article according to claim 1, wherein the tube has a volume of at least 115 mm3 ([0064]-[0066], [0131], Fig. 1; The internal diameter of the hollow tubular segment 16 (tube) is between about 5 millimetres and about 10 millimetres. [0070], The length of the hollow tubular segment 16 is from about 10 millimetres to about 30 millimetres. If the diameter of the tube is 5mm and the length is 10mm, then V=πd2L/4=π(5mm)2(10mm)/4=196.4 mm3. If the diameter of the tube is 10mm and the length is 30mm, then V=πd2L/4=π(5mm)2(10mm)/4=2356.2 mm3).
The range for the tube volume reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 28, Uthurry further teaches an article according to claim 1, wherein the tube defines an internal cavity with a volume of at least 125 mm3 and/or a volume of at most 400 mm3 ([0064]-[0066], [0131], Fig. 1; The internal diameter of the hollow tubular segment 16 (tube) is between about 5 millimetres and about 10 millimetres. [0070], The length of the hollow tubular segment 16 is from about 10 millimetres to about 30 millimetres. If the diameter of the tube is 5mm and the length is 10mm, then V=πd2L/4=π(5mm)2(10mm)/4=196.4 mm3. If the diameter of the tube is 10mm and the length is 30mm, then V=πd2L/4=π(5mm)2(10mm)/4=2356.2 mm3).
The range for the internal cavity volume reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 35, Uthurry further teaches the article wherein an article wherein the aerosol-generating material comprises an aerosol generating section comprising a plurality of strands and/or strips of aerosol-generating material ([0054], Alternative arrangements of homogenised tobacco material in a rod for use in an aerosol-generating article may include a plurality of elongate tubular elements formed by winding strips of homogenised tobacco material about their longitudinal axes).
Claim 36 is considered a product-by-process claim. The determination of patentability is based upon the product structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even if the prior product was made by a different process. In this instance, Uthurry discloses a structurally and compositionally equivalent product.
Regarding Claims 126-128, Uthurry further teaches an article further comprising at least one of the following: the wall of the tube forming a boundary of the cavity; and an end of the tube facing an end of the aerosol generating material ([0131], Fig. 1; A wall of hollow tubular segment 16 forms a boundary of the cavity. [0141], Fig. 3; The aerosol-generating article 40 of FIG. 3 differs structurally from the aerosol-generating article 10 of FIG. 1 in that it does not include a hollow cellulose acetate tube 14 as a support element. In this embodiment, the end of hollow tubular segment 16 (tube) faces and directly abuts rod 12 (aerosol generating material)).
Regarding Claim 132, Uthurry further teaches an article according to claim 1, wherein the cavity has a volume of at least 450 mm3 ([0064]-[0066], [0131], Fig. 1; The internal diameter of the hollow tubular segment 16 (tube) is between about 5 millimetres and about 10 millimetres. [0070], The length of the hollow tubular segment 16 is from about 10 millimetres to about 30 millimetres. If the diameter of the tube is 5mm and the length is 10mm, then V=πd2L/4=π(5mm)2(10mm)/4=196.4 mm3. If the diameter of the tube is 10mm and the length is 30mm, then V=πd2L/4=π(5mm)2(10mm)/4=2356.2 mm3).
The range for the cavity volume reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 133, Uthurry teaches an article according to claim 1 wherein the tube has an inner diameter between about 5 mm and about 10 mm ([0064]-[0066], [0131], Fig. 1; The internal diameter of the hollow tubular segment 16 (tube) is between about 5 millimetres and about 10 millimetres),
but does not teach the article wherein the tube has an inner diameter between about 1 mm and about 4 mm.
The precise inner diameter would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the speed of the aerosol flowing through the tube, the degree of cooling of the aerosol, the quality of the generated aerosol are variables which can be modified by the inner diameter of the tube (Uthurry, [0064]-[0069]). As such, without showing unexpected results, the claimed inner diameter cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the inner diameter by routine experimentation to obtain the desired speed of the aerosol, cooling of the aerosol, or quality of the generated aerosol, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art (see MPEP § 2144.05, II).
Regarding Claim 134, Uthurry teaches an article according to claim 1 wherein the article has an outer circumference of at least 21 mm ([0035]-[0036], Fig. 1; The external diameter of the aerosol generating article 10 is between about 5 millimetres and about 12 millimetres. If the external diameter is 5mm, C=πd=π(5mm)=15.7mm. If the axial length is 3 mm, then the diameter of the hollow tubular element 13 of Fig. 1 is about 12mm, and C=πd=π(12mm)=37.7mm).
The range for the outer circumference reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 135, Uthurry teaches an article according to claim 1 wherein the tube has an axial length of about 16 mm to 19 mm ([0070], [0131], Fig. 1; a length of the hollow tubular segment 16 is even more preferably from about 15 millimetres to about 20 millimetres).
The range for the cavity volume reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 136, Uthurry teaches an article according to claim 1 wherein the article is configured such that when the article is inserted into the non-combustible aerosol provision device, the minimum distance between a heater of the non-combustible aerosol provision device and the tube of the article is at least about 3 mm.
Claim 136 recites the limitation “wherein the article is configured such that when the article is inserted into the non-combustible aerosol provision device, the minimum distance between a heater of the non-combustible aerosol provision device and the tube of the article is at least about 3 mm”. As Claim 136, which depends from Claim 1, is directed to an article, limitations directed to the non-combustible aerosol provision device or system with which the article is to be used do not affect the patentability of the article unless they define a specific structural or compositional component of the article. Because the limitation does not recite any additional structural elements required by the article to perform the claimed functions, the limitation has been interpreted as a recitation of purpose or intended use of the article of Claim 136. As Uthurry discloses the structural limitations of the article of Claims 1 and 136, the article would necessarily be capable of being used in a non-combustible aerosol provision system.
Claims 7, and 129-131 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (US 2022/0007709 A1) as applied to Claims 1-2, and 4, and further in view of Sebastian (US 2013/0074853 A1).
Regarding Claim 7, Uthurry does not teach an article wherein the wall of the tube has a permeability of at least 500 Coresta Units.
Sebastian, directed to smoking articles ([0001]), teaches an article ([0086], Fig. 6; Cigarette 600 is a smoking article), the article comprising
an aerosol generating material ([0086], Fig. 6; Cigarette 600 comprises a tobacco rod 612. Tobacco is an aerosol generating material (see instant specification, pg 17, ln 16-17)) and
a downstream portion downstream of the aerosol generating material ([0086]-[0088], Fig. 6; Cigarette 600 comprises a filter element downstream of tobacco rod 612. The filter element comprises a plasticized and/or melted fiber product 626 surrounded by an outer plug wrap 628),
wherein the downstream portion comprises a tube comprising a wall ([0086]-[0089], Fig. 6; The filter element comprises a plasticized and/or melted fiber product 626 surrounded by an outer plug wrap 628. Outer plug wrap 628 may be a porous paper tube comprising a wall), and
wherein said tube is a paper tube ([0086]-[0089], Fig. 6; Outer plug wrap 628 may be a porous paper tube),
wherein the wall of the tube has a permeability of at least 500 Coresta Units ([0038], [0086]-[0089], Fig. 6; Outer plug wrap 628 may be a porous paper tube. Porous plug wrap papers may have a permeability of 1100 to 26000 Coresta Units).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the paper tube taught by Uthurry from the porous paper taught by Sebastian such that the wall of the tube has a permeability of at least 500 Coresta Units because Uthurry and Sebastian are directed to smoking articles, Sebastian demonstrates that a smoking article comprising a porous paper tube allows for the entrance of external air into the interior of the tube to dilute the smoke (aerosol) (Sebastian, [0089]), and this involves substituting one paper material for another to yield predictable results.
The range for the permeability disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claims 129-131, Uthurry teaches the article wherein the tube has a wall thickness of at least 325 microns ([0131], [0135], Fig. 1; Hollow tubular segment 16 is a paper tube. [0026], A thickness of a peripheral wall of the hollow tubular segment is less than about 1.5 millimetre (1500 microns)),
but does not teach an article wherein the wall has a permeability of at least 100 Coresta Units.
Sebastian, directed to smoking articles ([0001]), teaches an article ([0086], Fig. 6; Cigarette 600 is a smoking article), the article comprising
an aerosol generating material ([0086], Fig. 6; Cigarette 600 comprises a tobacco rod 612. Tobacco is an aerosol generating material (see instant specification, pg 17, ln 16-17)) and
a downstream portion downstream of the aerosol generating material ([0086]-[0088], Fig. 6; Cigarette 600 comprises a filter element downstream of tobacco rod 612. The filter element comprises a plasticized and/or melted fiber product 626 surrounded by an outer plug wrap 628),
wherein the downstream portion comprises a tube comprising a wall ([0086]-[0089], Fig. 6; The filter element comprises a plasticized and/or melted fiber product 626 surrounded by an outer plug wrap 628. Outer plug wrap 628 may be a porous paper tube comprising a wall), and
wherein said tube is a paper tube ([0086]-[0089], Fig. 6; Outer plug wrap 628 may be a porous paper tube),
wherein the wall of the tube has a permeability of at least 100 Coresta Units ([0038], [0086]-[0089], Fig. 6; Outer plug wrap 628 may be a porous paper tube. Porous plug wrap papers may have a permeability of 1100 to 26000 Coresta Units).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the paper tube taught by Uthurry from the porous paper taught by Sebastian such that the wall of the tube has a permeability of at least 100 Coresta Units because Uthurry and Sebastian are directed to smoking articles, Sebastian demonstrates that a smoking article comprising a porous paper tube allows for the entrance of external air into the interior of the tube to dilute the smoke (aerosol) (Sebastian, [0089]), and this involves substituting one paper material for another to yield predictable results.
The ranges for the wall thickness and permeability disclosed by the prior art overlap the claimed ranges, and therefore the claimed ranges are considered prima facie obvious.
Claims 12, 15, and 117 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (US 2022/0007709 A1) as applied to Claim 1, and further in view of Beard (US 2012/0255569 A1).
Regarding Claim 12 and 15, Uthurry does not teach an article wherein the article further comprises a capsule containing section, wherein the capsule is positioned between about 28 mm and about 38 mm from a distal end of the aerosol-generating material.
Beard, directed to smoking articles ([0001]), teaches an article ([0026], Fig. 1; Smoking article 10),
the article comprising an aerosol generating material ([0026], Fig. 1; Smoking article 10 comprises tobacco rod 12. Tobacco is an aerosol generating material (see instant specification, pg 17, ln 16-17)),
wherein the article further comprises a capsule containing section downstream of the aerosol generating material ([0026], [0057]-[0059], [0068]-[0069], Figs. 1-2, 10; Smoking article 10 comprises filter 20 downstream of tobacco rod 12. Filter 20 comprises filter material 38 directly proximal to tobacco rod 12 At least one breakable capsule 54 may be imbedded in filter material 38 as shown in Fig. 10),
wherein the capsule is positioned between about 28 mm and about 38 mm from a distal end of the aerosol-generating material ([0026], [0031]-[0032], [0057]-[0059], [0068]-[0069], Figs. 1-2, 10; Smoking article 10 may have a total length of 80 mm to 150 mm. Filter element 20 may have a length between 7 mm and 65 mm. Based on these values, tobacco rod 12 may have an axial length of 15 mm and 143 mm. Filter material 38 may have a length between 7 mm and 40 mm. If filter material 38 (comprising capsule(s) 54) is positioned directly downstream of tobacco rod 12, and tobacco rod 12 has a length of 15 mm, capsule 54 is positioned between 22 mm and 55 mm from a distal end of tobacco rod 12 (aerosol generating material). The range for the capsule position reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article taught by Uthurry with a capsule containing section as taught by Beard because Uthurry and Beard are directed to smoking articles, Beard demonstrates that rupturing the capsules releases a payload such as a flavoring agent, a breath freshening agent, a moistening agent, or a cooling agent into the stream of smoke (aerosol) (Beard, [0068]-[0069], [0077]), and this involves combining prior art elements according to known methods to yield predictable results.
Further, it would have been obvious to one of ordinary skill in the art to before the effective filing date of the claimed invention to position the capsule between about 28 mm and about 38 mm from a distal end of the aerosol-generating material as taught by Beard because Beard demonstrates that positioning the capsule containing section directly downstream of the aerosol generating material is a suitable location for administration of the payload within the capsule(s) (Beard, [0068]-[0069], Fig. 10), and that between about 28 mm and about 38 mm from a distal end of the aerosol-generating material is a suitable position for the capsule(s) within the capsule containing section (Beard, [0031]-[0032], [0057]-[0059], [0068]-[0069], Figs. 1-2, 10).
Regarding Claim 117, Uthurry further teaches the article wherein the aerosol generating material comprises a first aerosol generating material ([0131], Fig. 1; The rod of aerosol-generating substrate 12 may comprise a gathered sheet of homogenised tobacco material, which is the first aerosol generating material), but does not teach the article comprising the article further comprises a component downstream of the first aerosol generating material, wherein the component comprises a tubular portion and wherein the tubular portion comprises a wall comprising a second aerosol generating material.
Beard, directed to smoking articles ([0001]), teaches an article ([0026], Fig. 1; Smoking article 10),
the article comprising an aerosol generating material ([0026], Fig. 1; Smoking article 10 comprises tobacco rod 12. Tobacco is an aerosol generating material (see instant specification, pg 17, ln 16-17)),
wherein the aerosol generating material comprises a first aerosol generating material ([0026], Fig. 1; The cut filler of tobacco rod 12 is the first aerosol generating material) and
the article further comprises a component downstream of the first aerosol generating material ([0026], [0057]-[0059], Figs. 1-2; Smoking article 10 comprises filter 20 downstream of tobacco rod 12. Filter 20 comprises filter material 38 directly proximal to tobacco rod 12),
wherein the component comprises a tubular portion ([0026], [0057]-[0059], Figs. 1-3; Filter material 38 comprises tube 48 defining a channel in the center of filter material 38. Filter material 38 is therefore the tubular portion of filter 20) and
wherein the tubular portion comprises a wall comprising a second aerosol generating material ([0057]-[0059], [0068]-[0069], [0077], Figs. 1-3, 10; Filter material 38 is the wall of the tubular portion. At least one breakable capsule 54 may be imbedded in filter material 38 as shown in Fig. 10. Each breakable capsule 54 may contain a payload such as a flavoring agent such that the payload is release into the stream of smoke. The payload may be a liquid or particulate material. A liquid or solid material entraining in a flow of gas is an aerosol. And therefore, the payload within each breakable capsule is an aerosol generating material).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article taught by Uthurry with a tubular portion as taught by Beard because Uthurry and Beard are directed to smoking articles, Beard demonstrates that rupturing the capsules releases a payload such as a flavoring agent, a breath freshening agent, a moistening agent, or a cooling agent into the stream of smoke (aerosol) (Beard, [0068]-[0069], [0077]), and this involves combining prior art elements according to known methods to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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 on (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.
/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755