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
The office action is in response to Applicant’s amendment filed on 07/21/2026.
Claims 16-23 and 25-32 are pending.
Claims 24 and 31 are cancelled.
Claim 16 is amended.
Response to Arguments
Applicant' s arguments, see pages 6-13, filed 07/21/2026, with respect to the rejection(s) of claims 16-23 and 25-30 under 35 U.S.C. 103 have been fully considered and are discussed below.
On pages 6-7, the Applicant argues that the internal diameters provided were actually the external diameters of the disclosure.
The Examiner agrees and has amended the rejection accordingly.
On pages 7-10, the Applicant argues that Hwang does not disclose a length of the second hollow tubular segment being from 7 to 30 mm because that embodiment is referring to Hwang’s Figure 3 which is a different material from the second hollow tubular segment that is given a length and further argues that the cooling segment 330 is not a hollow tubular element.
The Examiner respectfully does not find the arguments persuasive because Hwang discloses both elements 330 and 530 are “cooling segments” and whether or not 330 is a hollow tubular element or a different type of cooling segment, does not change what a cooling segments length would be within the disclosure. While Hwang does not explicitly disclose the length of the second hollow tubular segment that comprises the ventilation zone, Hwang teaches the length of a cooling segment of a similar embodiment within the disclosure and therefore it would be obvious that the same element with the same function would have the same or similar length.
Furthermore, while the embodiment comprising the length does not have the ventilation zone, it would be reasonable and obvious to look at other embodiments within the same disclosure for suitable workable lengths regarding Hwang’s invention.
Furthermore, the location of the ventilation zone in relation to the downstream end is merely a design choice and absent evidence of critical or unexpected results would an obvious claim limitation. See MPEP 2144.04.
For purposes of clarity and to help advance prosecution additional support from Hwang has been provided in the rejection below.
A modified rejection based on the amendments and newly added claims is provided below.
Claim Objections
Claim 16 is objected to because of the following informalities:
Claim 16, line 23 should read: “wherein the elongate susceptor is [[is]] configured to”
Appropriate correction is required.
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 segment 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 16-22, 25-28 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US-20210259303-A1) and further in view of Mironov et al. (US-20160150825-A1)
In regards to claim 16, Hwang directed to a cigarette (i.e., aerosol generating article) for use with a holder, for generating an aerosol during heating ([0023]), discloses the aerosol-generating article comprising:
A tobacco rod 610 (i.e., rod of aerosol-generating substrate) ([0029];[0053];[0101]);
A downstream section at a location downstream of the rod of aerosol-generating substrate (Refer to Figure 6, wherein the downstream section includes the hollow tubular segments and the mouthpiece filter), the downstream section comprising:
A first support segment 620 for preventing the materials inside the tobacco from being pushed back (i.e., support element) ([0053];[0104]), located immediately downstream of and in longitudinal alignment with the rod of aerosol-generating substrate (Figure 6) defining a hollow tubular segment comprising an internal diameter ([0049]-[0050];[0104]), and
A second support segment 630 for effective cooling (i.e., an aerosol cooling element) ([0104]-[0105]), located immediately downstream of the support element and in longitudinal alignment with the support element and the rod of aerosol-generating substrate (Figure 6), the aerosol-cooling element comprising a second hollow tubular segment having an internal diameter ([0104]-[0105]); and
Perforations 631 comprising four to ten holes (i.e., ventilation zone) at a location along the second hollow tubular segment ([0107]-[0108]),
Wherein the internal diameter of the second hollow tubular segment may be greater than the internal diameter of the first hollow tubular segment ([0104]-[0105]),
The internal diameter of the support segment, comprising the first hollow tubular segment, may be about 2 to about 4.5 mm and the internal diameter of the aerosol cooling element, comprising the second hollow tubular segment, may be about 3 to 5.5 mm ([0104]). The resulting ratio of the second hollow tubular segment to the first hollow tubular segment is in a range from 0.67 to 2.75. The range disclosed by the prior art overlaps the claimed range of an internal diameter ratio of the second hollow tubular segment to the first hollow tubular segment being at least 1.25, and is therefore considered prima facie obvious.
Hwang further discloses the article is inserted into a holder for heating ([0023]), but does not explicitly disclose an elongate susceptor arranged longitudinally within the aerosol-generating substrate (I), the elongate susceptor converts electromagnetic energy into heat (II), the elongate susceptor is a part of the aerosol-generating article (III), and the article is an inductively heatable aerosol-generating article for use with an aerosol-generating device (IV).
Mironov, directed to an aerosol-generating article with multi-material susceptor, discloses an aerosol-generating article including an aerosol-generating substrate for use with an aerosol-generating device such as a holder ([0034]).
Mironov further discloses the article comprising an elongate susceptor arranged substantially longitudinally within the rod ([0039]) (I) and that the term susceptor refers to a material that can convert electromagnetic energy into heat ([0037]). (II)
Mironov further discloses the aerosol-generating device may have more than one susceptor, for example more than one elongate susceptor. Thus, heating may be efficiently affected in different portions of the aerosol-forming substrate ([0024]).
Mironov further discloses “the susceptor is part of a consumable aerosol-generating article, and is only used once. Thus, any residues that form on the susceptor during heating do not cause a problem for heating of a subsequent aerosol-generating article. The flavor of a sequence of aerosol-generating articles may be more consistent due to the fact that a fresh susceptor acts to heat each article. Furthermore, cleaning of the aerosol-generating device is less critical and may be achieved without damage to a heating element. Furthermore, the lack of a heating element that needs to penetrate an aerosol-forming substrate means that insertion and removal of an aerosol-generating article into an aerosol-generating device is less likely to cause inadvertent damage to either the article or the device. The overall aerosol-generating system is, therefore, more robust.” ([0029]). (III)
Mironov further discloses the susceptor 4 may be inserted into the rod of aerosol-forming substrate 20 during the process of forming the substrate ([0132]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, by making the article of Hwang comprise an inductive susceptor as part of the article for use with the holder device for inductive heating, as taught by Mironov, because both are directed to smoking articles for use with holders, Mironov teaches it is known in the art to insert a susceptor into the rod of substrate material during processing ([0132]), Mironov further teaches a susceptor as part of the article is an improvement because there is a new more consistent susceptor used to heat each article each time ([0029]), and this merely involves inserting the susceptor prior to engagement with a holder heating device, which is a known technique in the art, to yield predictable results.
It would further be obvious to one of ordinary skill in the art that the heating device and inductive heating susceptor would be an improvement to the smoking article of Hwang because the inductor susceptor of Mironov prevents over heating of the substrate and allows for contactless heating, which is less likely to cause damage to the article or device, thus creating a more robust system ([0018] and [0029]).
Modified Hwang does not explicitly disclose a distance between the ventilation zone and a downstream end of the elongate susceptor is from about 6 to about 20 millimeters. However, Hwang teaches embodiments wherein the susceptor containing portion (tobacco portion) may be about 12 mm, a length of the first filer segment may be about 10 mm, and a length of the cooling structure may be about 14 mm ([0038]). Considering Modified Hwang discloses the susceptor ends at the starting point of the first hollow tubular segment (Mironov Figure 2), the tobacco portions length is omitted and the ventilation zone distance to the downstream end of the susceptor would be anywhere from 10 to 24 mm (ventilation zone is located within the cooling section and all that is between the susceptor, 10 mm, and the ventilation zone is the filter and at least part of the cooling section, 14 mm). The range disclosed by the prior art overlaps the claimed range of a distance between the ventilation zone and a downstream end of the elongate susceptor is from about 6 to 20 mm, and is considered prima facie obvious. Refer to Figure 6 provided below.
PNG
media_image1.png
373
682
media_image1.png
Greyscale
Furthermore, while the embodiment comprising the length discussed above does not have the ventilation zone, it would be reasonable and obvious to look to other embodiments within the same disclosure for suitable workable lengths regarding Hwang’s invention.
The Examiner further notes that the location of the ventilation zone in relation to the downstream end is merely a design choice and absent evidence of critical or unexpected results would an obvious claim limitation. See MPEP 2144.04.
In regards to claim 17, Hwang discloses the internal diameter of the first hollow tubular segment, may be as low as 2 mm and as high as 9 mm and the internal diameter of the second hollow tubular segment, may be as low as 3 mm and as high as 9 mm ([0104]). The resulting ratio of the second hollow tubular segment to the first hollow tubular segment is in a range from 0.33 to 4.5. The range disclosed by the prior art overlaps the claimed range of an internal diameter ratio of the second hollow tubular segment to the first hollow tubular segment being at least 1.5, and is therefore considered prima facie obvious.
In regards to claim 18, Hwang discloses the internal diameter of the first hollow tubular segment is 2 to 9 mm ([0104]). The range disclosed by the prior art overlaps the claimed range of an internal diameter of the first hollow tubular segment being at least 1.2 mm, and is therefore considered prima facie obvious.
In regards to claim 19, Hwang discloses the internal diameter of the second hollow tubular segment is 3 to 9 mm ([0104]). The range disclosed by the prior art overlaps the claimed range of an internal diameter of the second hollow tubular segment being at least 2.5 mm, and is therefore considered prima facie obvious.
In regards to claim 20, Hwang discloses a similar support segment 320 comprises a hollow tubular segment with a length being about 10 mm ([0069]). While the support segment in this embodiment is not the exact same as the one described in claim 16, it is located at the same location and performs the same function as the one described in claim 16. Therefore, it would be obvious to one of ordinary skill in the art that the exemplary embodiments would all at least have similar lengths/dimensions and the length of one filter element would be interchangeable with another similar element located in the same position. Thus, the range disclose by the prior art overlaps the claimed range of the first hollow tubular segment having a length from about 6 to 12 mm and is therefore considered prima facie obvious.
In regards to claim 21, Hwang discloses an embodiment wherein the aerosol-cooling segment may have a length of 7 to 30 mm ([0074]). While the aerosol-cooling segment in this embodiment is not the exact same as the one described in claim 16, it would be obvious that this length could also apply to the second hollow tubular segment because both elements perform the same function and are located at the same locations. Therefore, it would be obvious to one of ordinary skill in that the exemplary embodiments would all at least have similar lengths/dimensions and the length of one filter element would be interchangeable with another similar element located in the same position. Thus, the range disclosed by the prior art overlaps the claimed range of the second hollow tubular segment having a length from about 5 to 10 mm and is considered prima facie obvious.
In regards to claim 22, Hwang discloses a hollow tubular segment but is silent to a thickness of a peripheral wall of the first hollow tubular segment being at least about 1 mm.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the wall thickness of the first hollow tubular element since it has been 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). The burden is upon the Applicant to demonstrate that the claimed peripheral wall thickness is critical and has unexpected results. In the present invention, one would have been motivated to optimize the wall thickness motivated by the desire to change the diameter of the hollow tubular segments such that air passing through the hollow tubular segments may be diffused, have an increased contact surface area, and increased contact time with air flowing in through the ventilation zone for effective cooling ([0104]-[0105]).
In regards to claim 25, Modified Hwang discloses the elongate susceptor extends all the way to a downstream end of the rod of the aerosol-generating substrate (Mironov Figure 2).
In regards to claim 26, Hwang discloses the internal diameter of the first hollow tubular segment is 2 to 9 mm ([0104]). Modified Hwang discloses the susceptor may have a width of between 1 mm and 6 mm (Mironov [0039]). The range of the diameter of the first hollow tubular segment to the width of the susceptor results in a ratio of 0.33 to 9. The range disclosed by the prior art overlaps the claimed range of an internal diameter ratio of the first hollow tubular segment to the width of the susceptor being at least 0.2, and is therefore considered prima facie obvious.
In regards to claim 27, Hwang discloses the internal diameter of the second hollow tubular segment is 3 to 9 mm ([0104]). Modified Hwang discloses the susceptor may have a width of between 1 mm and 6 mm (Mironov [0039]). The range of the diameter of the second hollow tubular segment to the width of the susceptor results in a ratio of 0.5 to 9. The range disclosed by the prior art overlaps the claimed range of an internal diameter ratio of the second hollow tubular segment to the width of the susceptor being at least 0.2, and is therefore considered prima facie obvious.
In regards to claim 28, Modified Hwang is silent regarding a volume of the cavity and does not explicitly disclose a ratio between a volume of the cavity of the first hollow tubular segment and a volume of the cavity of the second hollow tubular segment is from 0.1 to 0.9.
However, Modified Hwang discloses an aerosol-generating article with the same internal and external diameters of the first and second hollow tubular segments, the same hollow tubular segment lengths, a support element, an aerosol-cooling element, and an aerosol-generating substrate as claimed and discussed above. Hwang further discloses the cavities between the two hollow tubular segments are slightly different with the second hollow tubular cavity greater than the first hollow tubular cavity (Figure 6).
Therefore, one of ordinary skill in the art having the diameters and lengths could reasonably determine a range of volumes of the cavities, and that it follows that with similar measurements as claimed and disclosed by the applicant that the volumes would be overlapping and thus result in a ratio that would overlap the claimed range of 0.1 to about 0.9, absent evidence to the contrary.
In regards to claim 32, Hwang discloses the internal diameter of the first hollow tubular segment, may be as low as 2 mm and as high as 9 mm and the internal diameter of the second hollow tubular segment, may be as low as 3 mm and as high as 9 mm ([0104]). The resulting ratio of the second hollow tubular segment to the first hollow tubular segment is in a range from 0.33 to 4.5. The range disclosed by the prior art overlaps the claimed range of an internal diameter ratio of the second hollow tubular segment to the first hollow tubular segment being at least 1.6, and is therefore considered prima facie obvious.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US-20210259303-A1) in view of Mironov et al. (US-20160150825-A1), as applied to claim 16 above and alternatively further in view of Chen (CN-110403235-A, hereinafter referring to the English Translation provided).
In regards to claim 23, Modified Hwang is silent to the wall thickness of the second tubular segment and does not explicitly disclose a wall thickness of less than 2.5 mm.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the wall thickness of the second hollow tubular element since it has been 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). The burden is upon the Applicant to demonstrate that the claimed peripheral wall thickness is critical and has unexpected results. In the present invention, one would have been motivated to optimize the wall thickness motivated by the desire to change the diameter of the hollow tubular segments such that air passing through the hollow tubular segments may be diffused, have an increased contact surface area, and increased contact time with air flowing in through the ventilation zone for effective cooling ([0104]-[0105]).
Alternatively, Chen, directed to a smoking article, discloses the smoking article comprising an aerosol-generating substrate and a support segment with a tube wall (i.e., second hollow tubular segment) with ventilation holes to allow air from the outside to enter and mix with the flue gas ([0005]-[0006]).
Chen further discloses a second hollow tubular segment 3 with a wall thickness of 0.8 to 1.2mm ([0014]), which overlaps the claimed range of the second hollow tubular segment comprising a wall thickness of less than 2.5 mm and is considered prima facie obvious.
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to look to a similar reference for a known suitable peripheral wall thickness of a comparable aerosol-generating article, especially when the prior art is silent to one, to yield predictable results.
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang et al. (US-20210259303-A1) in view of Mironov et al. (US-20160150825-A1), as applied to claim 16 above and further in view of Malgat (US-20160331032-A1).
In regards to claims 29-30, Modified Hwang is silent regarding a specific resistance to draw of the support and aerosol cooling elements and does not explicitly disclose an RTD of the support element is less than about 10 mm H2O and an RTD of the aerosol-cooling element is less than about 10 mm H2O.
Malgat directed to an aerosol-generating article with low resistance air flow path, discloses the airflow path which goes through the first and second hollow tubular segments, has a resistance to draw preferably close to zero, for example lower than 10 mm (claims 1-2). The ranges disclosed by the prior art overlaps the claimed range of the support element and the aerosol-cooling element having an RTD less than about 10 mm H2O, and is therefore considered prima facie obvious.
Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to look to a similar reference for a known suitable resistance to draw, especially when modified Hwang is silent to one, of a comparable aerosol-generating article with similar downstream elements to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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 at (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.
/MADELEINE P DELACRUZ/ Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights