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 .
Status of the Claims
Claims 1-5, 7, 10-12, 15-16, 22, 24, 26-28, 35-36, 117, 126-136, and 138 are pending and are subject to this Office Action. Claims 1-2, 4, 10, and 15 are amended. Claims 6, 8-9, 13-14, 17-21, 23, 25, 29-34, 37-116, 118-125 are cancelled. Claim 138 is new.
Response to Amendments
The amendments to the claims filed on 4/21/2026 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 126-137 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
On pg. 9, Applicant argues that one skilled in the art would not look to Beard, due to Beard being related to an entirely different field of combustible cigarettes, whereas Uthurry is directed to a non-combustible article. Examiner does not find the argument persuasive because Beard states that its invention may be employed as a non-combustible article (Beard, [0006], The present invention relates to filtered smoking articles possessing filter elements. The nature, form, or type of smoking article can vary. Exemplary smoking articles include those in the form of a cigarette or an aerosol-generating smoking article that does not combust tobacco).
On pgs. 9-10, Applicant argues that Beard provides no teaching as to how the capsule should be positioned relative to the ventilation holes of the cooling section; and therefore, neither Uthurry nor Beard discloses the new limitation: “wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.” On pg. 10, Applicant argues that neither Uthurry nor Beard discloses the new limitation: “wherein the body of material is downstream of [a] tubular element.” Examiner does not find the argument persuasive because Uthurry and Beard can be combined to yield the new limitations of amended Claims 1, 2, and 4. Specifically:
Uthurry, directed to smoking articles ([0001]-[0002]), teaches an article ([0010], [0131], Fig. 1; Aerosol-generating article 10), the article comprising
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 the cooling segment comprises one or more ventilation holes 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),
wherein the article comprises a mouthpiece comprising a tubular element and a body of material, wherein the body of material is downstream of the tubular element ([0131], Fig. 1 The aerosol-generating article 10 shown in FIG. 1 comprises a rod of aerosol-generating substrate 12, a hollow cellulose acetate tube 14, a hollow tubular segment 16 and a mouthpiece segment 18. Elements 14, 16, and 18 form a mouthpiece for the article 10. Hollow cellulose acetate tube 14 is a tubular element. Mouthpiece segment 18 is a body of material positioned downstream of hollow cellulose acetate tube 14 (tubular element)),
wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10)),
wherein the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres),
but does not teach the article wherein the body of material comprises a capsule, and wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
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 body of material downstream of an aerosol generating material, wherein the body of material comprises a capsule ([0026], [0057]-[0059], [0068]-[0069], Figs. 1-2, 10; Smoking article 10 comprises filter 20 (body of material) downstream of tobacco rod 12 (aerosol generating material). 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).
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 wherein the body of material comprises a capsule 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, Uthurry demonstrates that the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10) and the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres). Because the capsule is positioned within the body of material as taught by Beard, and the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article, it is reasonably understood that there must be embodiments of Uthurry in view of Beard wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
The following is a modified rejection based on amendments made to the claims.
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, 10-12, 15-16, 22, 24, 26-28, 35-36, 117, 126-128, 132-136, and 138 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (US 2022/0007709 A1) in view of Beard (US 2012/0255569 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 one or more ventilation holes 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),
wherein the article comprises a mouthpiece comprising a tubular element and a body of material, wherein the body of material is downstream of the tubular element ([0131], Fig. 1 The aerosol-generating article 10 shown in FIG. 1 comprises a rod of aerosol-generating substrate 12, a hollow cellulose acetate tube 14, a hollow tubular segment 16 and a mouthpiece segment 18. Elements 14, 16, and 18 form a mouthpiece for the article 10. Hollow cellulose acetate tube 14 is a tubular element. Mouthpiece segment 18 is a body of material positioned downstream of hollow cellulose acetate tube 14 (tubular element)),
wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10)),
wherein the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres),
but does not teach the article wherein the body of material comprises a capsule, and wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
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 body of material downstream of the aerosol generating material, wherein the body of material comprises a capsule ([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).
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 wherein the body of material comprises a capsule 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, Uthurry demonstrates that the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10) and the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres). Because the capsule is positioned within the body of material as taught by Beard, and the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article, it is reasonably understood that there must be embodiments of Uthurry in view of Beard wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
The ranges for the wall thickness, aerosol former material content, and distance between the ventilation holes and the capsule 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 one or more ventilation holes 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),
wherein the article comprises a mouthpiece comprising a tubular element and a body of material, wherein the body of material is downstream of the tubular element ([0131], Fig. 1 The aerosol-generating article 10 shown in FIG. 1 comprises a rod of aerosol-generating substrate 12, a hollow cellulose acetate tube 14, a hollow tubular segment 16 and a mouthpiece segment 18. Elements 14, 16, and 18 form a mouthpiece for the article 10. Hollow cellulose acetate tube 14 is a tubular element. Mouthpiece segment 18 is a body of material positioned downstream of hollow cellulose acetate tube 14 (tubular element)),
wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10)),
wherein the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres),
but does not teach the article wherein the body of material comprises a capsule, and wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
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 body of material downstream of the aerosol generating material, wherein the body of material comprises a capsule ([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).
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 wherein the body of material comprises a capsule 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, Uthurry demonstrates that the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10) and the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres). Because the capsule is positioned within the body of material as taught by Beard, and the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article, it is reasonably understood that there must be embodiments of Uthurry in view of Beard wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
The ranges for the wall thickness, axial length, aerosol former material content, and distance between the ventilation holes and the capsule disclosed by the prior art overlaps the claimed ranges, and therefore the claimed ranges are considered prima facie obvious.
Regarding Claim 3, Uthurry in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 one or more ventilation holes 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),
wherein the article comprises a mouthpiece comprising a tubular element and a body of material, wherein the body of material is downstream of the tubular element ([0131], Fig. 1 The aerosol-generating article 10 shown in FIG. 1 comprises a rod of aerosol-generating substrate 12, a hollow cellulose acetate tube 14, a hollow tubular segment 16 and a mouthpiece segment 18. Elements 14, 16, and 18 form a mouthpiece for the article 10. Hollow cellulose acetate tube 14 is a tubular element. Mouthpiece segment 18 is a body of material positioned downstream of hollow cellulose acetate tube 14 (tubular element)),
wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10)),
wherein the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres),
but does not teach the article wherein the body of material comprises a capsule, and wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
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 body of material downstream of the aerosol generating material, wherein the body of material comprises a capsule ([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).
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 wherein the body of material comprises a capsule 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, Uthurry demonstrates that the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10) and the body of material has a length between 4 mm to 25 mm ([0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres). Because the capsule is positioned within the body of material as taught by Beard, and the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article, it is reasonably understood that there must be embodiments of Uthurry in view of Beard wherein the ventilation holes are between about 1 mm and about 18 mm upstream of the capsule.
The ranges for the wall thickness, axial length, aerosol former material content, and distance between the ventilation holes and the capsule disclosed by the prior art overlaps the claimed ranges, and therefore the claimed ranges are considered prima facie obvious.
Regarding Claim 5, Uthurry in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 15, Uthurry in view of Beard teaches an article according to claim 1. Uthurry further teaches the article wherein the capsule is positioned between about 28 mm and about 38 mm from a distal end of the aerosol-generating material ([0037], Fig. 1; The rod of aerosol generating substrate 12 may have a length of between about 5 millimetres; and [0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres; and [0070], A length of the hollow tubular segment 16 is preferably at least about 10 millimetres; and [0110], [0113], The support element (hollow cellulose acetate tube 14) may have a length of between about 5 millimetres and about 15 millimetres. Based on the cited dimensions, the entire article may have a length as low as 24 mm or a length above 70 mm. Therefore, there must be embodiments of Uthurry wherein the capsule within the body of material (mouthpiece segment 18) is between about 28 mm and about 38 mm from a distal end of the aerosol-generating material (rod of aerosol generating substrate 12)).
Regarding Claim 16, Uthurry in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article further comprising a wrapper that circumscribes the tube ([0131], Fig. 1; Wrapper 20 circumscribes hollow tubular element 16).
Regarding Claim 24, Uthurry in view of Beard teaches an article according to claim 2. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. 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 in view of Beard discloses a structurally and compositionally equivalent product.
Regarding Claim 117, Uthurry in view of Beard teaches an article according to claim 1. 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.
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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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 in view of Beard teaches an article according to claim 1. Uthurry further teaches the article 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.
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.
Regarding Claim 138, Uthurry in view of Beard teaches an article according to claim 1. Uthurry further teaches the article wherein the ventilation holes are between about 1 mm and about 10 mm upstream of the capsule ([0090], Fig. 1; the ventilation zone 26 is provided at a location along the hollow tubular segment 16 from about 10 millimetres to about 25 millimetres from a downstream end of the mouthpiece segment 18 (the proximal end of article 10); and [0058], A length of the mouthpiece segment 18 is from about 4 millimetres to about 25 millimetres. Because the capsule is positioned within the body of material as taught by Beard, and the ventilation holes are between about 10 mm and about 25 mm upstream of the proximal end of the article, it is reasonably understood that there must be embodiments of Uthurry in view of Beard wherein the ventilation holes are between about 1 mm and about 10 mm upstream of the capsule).
The range for the distance between the ventilation holes and the capsule reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Claims 7, and 129-131 are rejected under 35 U.S.C. 103 as being unpatentable over Uthurry (US 2022/0007709 A1) in view of Beard (US 2012/0255569 A1) as applied to Claims 1-2, and 4, and further in view of Sebastian (US 2013/0074853 A1).
Regarding Claim 7, Uthurry in view of Beard 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.
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.
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.
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/J.M.M./
Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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