DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 12/08/2025.
Claim 15 and 23 are amended.
Claims 15-28 are presently examined.
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.
Claims 15-16 and 18-25 are rejected under 35 U.S.C. 103 as being unpatentable over Han (EP3556230A2).
Regarding Claim 15, Han teaches an aerosol-generating device configured to receive an aerosol-generating article (see FIG 42), the aerosol-generating device comprising:
a distal end (see FIG 42, bottom of device) and a mouth end (top of device, FIG 42);
the mouth end having a mouth end face (top surface face of the mouth end of the device, see annotated FIG 42)
a housing (FIG 42, casing 10010 and parts attached or attachable thereto, see also [0396] – [0400]) comprising a peripheral wall (wall of tube 10200), the peripheral wall defining a device cavity having an open end (see mouth end face of tube 10200) configured to removably receive the aerosol-generating article at the mouth end of the aerosol-generating device (see annotated FIG 42) wherein
the open end of the device cavity is located at the mouth end face of the aerosol generating device (e.g., see annotated FIG 42 below); and
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a heater (see [0501], heater 10300, see also FIG 42) configured to heat the aerosol-generating article when the aerosol-generating article is received within the device cavity (see [0501] and FIG 42, the heater 10300 is configured to heat the aerosol generating article when the aerosol generating article is received within the device cavity), wherein
the housing further comprises a ventilation chamber defined within the peripheral wall, wherein
the ventilation chamber (10040d, see FIG 46, FIG 47 shows flow path) is configured to be in fluid communication: with an exterior of the aerosol-generating device and the aerosol-generating article received within the device cavity, and
with the exterior of the aerosol-generating device through a chamber inlet (10000g, FIG 47) defined within a thickness of the peripheral wall (10000g is within the wall edge),
the chamber inlet having a cross-sectional area that is smaller than a cross-sectional area of the ventilation chamber (see FIG 48 below, see also FIG 46)
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and extending between the ventilation chamber and the mouth end face of the aerosol-generating device (see annotated FIG 42 above),
Han is silent regarding the length of the ventilation chamber being less than or equal to 8 mm.
While Han does not specifically recite dimensions for the ventilation chamber it is clear from Han’s figures 45-50 that the ventilation chamber is small. Therefore, it would be obvious to one of ordinary skill in the art at the time of filing to determine the workable dimensions of the ventilation chamber through routine experimentation. The courts have held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). Thus, a person of ordinary skill in the art would have been motivated to search the known art for appropriate lengths for the air inlet.
Regarding Claim 16, modified Han teaches the claim limitations as set forth above. Additionally, Han teaches the ventilation chamber (10040d) is located at a longitudinal position away from the mouth end of the aerosol-generating device (see FIG 46 and 47).
Regarding Claim 18, modified Han teaches the claim limitations as set forth above.
Additionally, Han teaches the chamber inlet has a cross-sectional area that is less than or equal to 50 percent of a cross- sectional area of the ventilation chamber (See FIG 46 and annotated FIG 48 above, FIG 48 shows a closer imagine of the ventilation chamber 10040d next to the chamber inlet which is about 30% the cross sectional area of the ventilation chamber which falls within the claimed range of less than or equal to 50 percent of the cross sectional area of the ventilation chamber.
Regarding Claim 19 and 20, modified Han teaches the claim limitations as set forth above. Han teaches a thickness of a portion of the peripheral wall defining the ventilation chamber is different than a thickness of a different portion of the peripheral wall.
Specifically, Han teaches the outer wall performs heat insulation function for preventing the heat of the cigarette from being transmitted directly to the user [0499]. Therefore, it would have been obvious to a person of ordinary skill in that in order for the outer wall to performs heat insulation function for preventing the heat of the cigarette from being transmitted directly to the user, it would be necessary for the wall to be thicker than the wall of the ventilation chamber because the peripheral wall would have the function of insulating and it is well known in the art that an insulating wall would be thicker than a simple sidewall because the insulating wall would need to accommodate the insulation in order to prevent the heat of the cigarette from being transferred directly to the user [0499], wherein this insulating function would not be necessary and might not be desired in the ventilation chamber which includes an air inlet and can function as a cooling structure [0355]. It would be obvious to a person of ordinary skill in the art that a structure that is functioning as a cooling structure might have a less insulating sidewall to allow the intended cooling function of the chamber.
Thus it would be obvious to a person of ordinary skill in the art before the filing of the claimed invention that the thickness of the portion of the peripheral wall defining the ventilation chamber of Han is less than the thickness of the different portion of the peripheral wall.
Regarding Claim 21, modified Han teaches the claim limitations as set forth above. Although Han does not explicitly disclose that the thickness of the portion of the peripheral wall defining the ventilation chamber varies along a longitudinal direction.
Thus, it would be obvious to a person of ordinary skill in the art seeking to optimize the cooling function of the ventilation chamber and the insulating function of the non-cooling portions of the peripheral wall of the device, to taper the insulating wall (or non-insulating) portion as the requirement for insulating either increases or decreases along the longitudinal direction as taught by Han. [0499].
In other words, changing the shape of the chamber so that the thickness of the wall varies in the longitudinal direction is considered merely an obvious change of shape as it does not change the function of the chamber (insulating might be thicker and non-insulating/cooling might be thinner, but this is expected). The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding Claim 22, modified Han teaches the claim limitations as set forth above. Han teaches the ventilation chamber is annular (See FIG 57-58 the ventilation chamber follows the inside of the annular space, it would be obvious for a person of ordinary skill in the art that the ventilation chamber is annular, additionally the ventilation chamber could have any shape because change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding Claim 23, modified Han teaches the claim limitations as set forth above. Han teaches an extractor (outside surface of cigarette 3 is the extractor, e.g., the cigarette 3 is extracted via this outside surface of the cigarette 3 by the user’s hand, [0408]) configured:
to extract the aerosol-generating article received in the aerosol- generating device (see [0408]), and
to be moveable within the device cavity (the cigarette 3 is moveable within the device cavity as claimed, see also [0408]).
Regarding Claim 24, modified Han teaches the claim limitations as set forth above. Han teaches the extractor is further configured to expose the ventilation chamber when the extractor is in an operating position (See FIG 46, the aerosol generating article 3 is in position), the operating position being defined by the heater being in contact with an aerosol-forming substrate of the aerosol-generating article (heater 10300 is in contract with the aerosol forming substrate of the article 3, the ventilation chamber is in fluid communication with the device in the operating position).
Regarding Claim 25, modified Han teaches the claim limitations as set forth above. Han teaches an air-flow path is defined between the peripheral wall of the housing and an external surface of the extractor, and wherein the ventilation chamber is in fluid communication with the air-flow path. (See annotated FIG 47 below, the air-flow path is defined between the peripheral wall of the housing and an external surface of the extractor, and the ventilation chamber is in fluid communication with the air-flow path
Claims 17 is rejected under 35 U.S.C. 103 as being unpatentable over Han (EP3556230A2) in view of Fursa (US20190230989A1).
Regarding Claim 17, modified Han teaches the claim limitations as set forth above.
Additionally, modified Han teaches the length of the chamber inlet is between about 1 mm and about 6 mm. Fursa teaches a similar smoking device with an inlet portion, and teaches appropriate lengths for the inlet that is 1.8mm to about 2.3mm. [0072]
Therefore, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the smoking article of Han with the smoking article of Fursa because both Han and Fursa are directed to smoking articles with air inlets. Han is silent in regards to suitable lengths for the air inlet and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable lengths of air inlets. Fursa teaches known lengths of air inlets, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. to modify the device of Han with the teachings of Fursa.
Thus, modified Han teaches the air inlet is 1.8 to 2.3mm and therefore likewise teaches that the adjacent ventilation chamber is of a similar size. Thus, it would be obvious the ventilation chamber is less than or equal to 8 mm.
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Claims 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Han (EP3556230A2) in view of Hepworth (WO2019096983A1).
Regarding Claim 26, modified Han teaches the claim limitations as set forth above. Han teaches an aerosol-generating system, comprising: an aerosol-generating article comprising:
a rod of aerosol-forming substrate ( [0263], tobacco rod 3 which includes tobacco rod 310 see FIG 23a and 23b),
a filter disposed downstream of the rod (filter 321), wherein
the rod and the filter are assembled within a wrapper ([0264, see also FIG 23a and 23b), and
an aerosol-generating device according to claim 15 (see rejection of claim 15 above),
Han fails to explicitly disclose a ventilation zone located on the wrapper, the ventilation zone comprising a plurality of apertures extending through the wrapper (see FIG 2 ventilation zone 108 illustrates a plurality of apertures extending through the wrapper).
Hepworth teaches a ventilation zone located on the wrapper (ventilation region 108, which controls the amount of airflow into the consumable 102, page 9 top paragraph), the ventilation zone comprising a plurality of apertures extending through the wrapper; and
the aerosol-generating system is configured so that, when the aerosol- generating article is received within the device cavity, the ventilation zone of the aerosol- generating article is located within the device cavity such that the ventilation chamber overlies the ventilation zone of the aerosol-generating article, see Hepworth FIG 4, the aerosol generating article is shown received within the device cavity and the ventilation zone (108) is shown in the device cavity and the ventilation chamber (the area inside the device that overlies the ventilation zone of the article).
It would be obvious to a person of ordinary skill in the art to duplicate the ventilation air inlet and chamber of Han to be included in both of the air inlets (112 and 402) of Hepworth (See Hepworth Annotated FIG 4 below, modified with duplicated FIG 48 of Han), the mere duplication of parts, without any new or unexpected results, is within the ambit of one of ordinary skill in the art. See MPEP § 2144.04 VI B..
Thus, Hepworth teaches a ventilation zone located on the wrapper (ventilation region 108, which controls the amount of airflow into the consumable 102, page 9 top paragraph), the ventilation zone comprising a plurality of apertures extending through the wrapper which receives air from the inlet and ventilations chambers.
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Regarding Claim 27, modified Han teaches the claim limitations as set forth above. Han teaches the filter of the aerosol-generating article comprises: a mouthpiece segment comprising a plug of filtration material (filter segment 204, see FIG 2) disposed downstream of the rod of aerosol-forming substrate, and
a hollow tubular segment (cooling segment 202, see FIG 2) located between the mouthpiece segment and the rod of aerosol-forming substrate (page 9 paragraph 1, see also FIG 2), wherein
the ventilation zone is located at a position along an upstream half of the hollow tubular segment (See FIG 2, note ventilation zone 108 is located at a position along an upstream half of the hollow tubular segment 202).
Regarding Claim 28, modified Han teaches the claim limitations as set forth above. Han teaches the heater comprises an elongate heating element configured to penetrate the rod of aerosol-forming substrate when the aerosol-generating article is received within the aerosol-generating device (See FIG 46, elongate heating element 10300 is an elongate heating element configured to penetrate the rod of aerosol-forming substrate when the aerosol-generating article is received within the aerosol-generating device, as shown in FIG 46).
Response to Arguments
Regarding the rejection under 35 USC 112b:
Applicant’s arguments, see claim amendments and remarks, filed 12-08-2025, with respect to the rejection under 35 USC 112b have been fully considered and are persuasive. Accordingly, the rejection of claim 23 under 35 USC 112b has been withdrawn.
Regarding the rejection under 35 USC 103:
Applicant’s arguments, see remarks and most specifically claim amendments, filed 12-08-2025, with respect to the rejection(s) of claim(s) 15-28 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection under 35 USC 103 is made in view of Han. The applicant has amendment claim 15 to include limitations that were not previously presented and are not met by the previous rejection set forth in view of Han, thus new grounds of rejection are necessitated by Applicants amendments and newly required limitations in view of Han as set forth above.
Examiner thanks Applicant for clarification on the movable part.
Applicant argues inter alia (page 7 and 8 of remarks):
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This argument found particularly persuasive in view of the rejection of record and necessitated the new claim interpretation and new grounds of rejection in view of Han as set forth above.
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 Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.T.F./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747