DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/17/2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 7/17/2025.
Claim 15 is amended.
Claims 1-14 are cancelled.
Claim 29 is newly added.
Claims 15-29 are pending.
Response to Arguments
Applicant' s arguments, see pages 7-10, filed 7/17/2025, with respect to the rejection(s) of claim(s) 15, 21, and 24-28 under 35 U.S.C. § 103 as being unpatentable over Hufnagel in view of Seo and Watanabe have been fully considered and are persuasive. Applicant has amended claim 15 to include the limitation “a second hollow tubular segment having…an internal diameter of at least 2 millimeters.” The prior art of record, particularly Watanabe, fails to disclose such a limitation. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited prior art.
Claim Rejections - 35 USC § 103
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.
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 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, 21, and 24-29 are rejected under 35 U.S.C. 103 as being unpatentable over Hufnagel et al. (US 2016/0286851; of record) in view of Lord et al. (US 2021/0251280).
Regarding claim 15, Hufnagel discloses a smoking article (abstract; “aerosol-generating article”) configured to generate aerosol with heat without combustion ([0002]), the smoking article (101; Fig. 2) comprising:
a rod (see [0072]) of an aerosol-forming substrate (111) comprising a gel ([0045]; “gel composition” and “at least one gelling agent”) having at least nicotine ([0045]; “alkaloid compound”), and an aerosol former ([0045]);
a mouthpiece filter (105; “mouthpiece element”); and
an intermediate hollow section between the rod of aerosol-generating substrate and the mouthpiece filter (see Fig. 2) comprising:
a hollow cellulose acetate tube (109; “support element”) downstream of the rod of aerosol-forming substrate (see Fig. 2) comprising a hollow tube (“first hollow tubular segment”) defining a first longitudinal cavity providing a first unrestricted flow channel (see Fig. 2) and having a wall thickness (see Fig. 2), and
a transfer section (107; “aerosol-cooling element”) that cools volatile substances within ([0072]) in axial alignment with the mouthpiece filter and abutting an upstream end of the mouthpiece filter (see Fig. 2), comprising a second hollow tube (see Fig. 2; “second hollow tubular segment”) having a length (see Fig. 2) and defining a second longitudinal cavity providing a second unrestricted flow channel (see Fig. 2),
wherein the first and second unrestricted flow channels are empty (see Fig. 2).
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However, Hufnagel does not explicitly teach (1) the first hollow tubular segment having a wall thickness of at least 1 millimeter or (2) the second hollow tubular segment having a length of less than 10 millimeters and an internal diameter of at least 2 millimeters. Specifically, Hufnagel does not mention the possible lengths or diameters of the hollow cellulose acetate tube or transfer section.
Lord teaches an aerosol-forming article (abstract) comprising a heat-not-burn (HNB) consumable (1d; Fig. 17) comprising an aerosol-forming substrate (2d), an upstream filter element (4d; “support element”), a cooling element (6d; “aerosol-cooling element”) and a downstream (terminal) filter element (5d; “mouthpiece”), wherein the aerosol-forming substrate has a diameter of between 5 and 10 mm ([0047]), wherein the upstream filter element has a diameter substantially matching the diameter of the aerosol-forming substrate ([0052]) and may have a hollow bore filter element ([0056], see also Fig. 17) having a bore diameter between 1 and 5 mm ([0056]), and wherein the cooling element has an axial length of less than 20 mm, e.g., between 8 and 18 mm ([0196]; see also [0407], describing an axial length between 5 and 15 mm; overlaps the claimed range of “less than 10 millimeters”) and a bore (8d) having a diameter of between 3 and 7 mm ([0252], see also [0571], describing a diameter of 4 mm; “internal diameter of at least 2 millimeters”). Moreover, Lord teaches another embodiment (Fig. 1-2) comprising an aerosol-forming substrate (2), an upstream filter element (4; “support element”), an intermediate hollow bore filter element (6; “aerosol cooling element”) that acts as a cooling/mixing chamber ([0021]), and a downstream filter element (5), wherein the aerosol-forming substrate has a diameter of between 5 and 10 mm ([0047]), wherein the upstream filter element has a diameter substantially matching the diameter of the aerosol-forming substrate ([0052]) and may have a hollow bore filter element ([0056], see also Fig. 17) having a bore diameter between 1 and 5 mm ([0056]), and wherein each filter, including the intermediate filter, has an axial length of less than 20 mm, e.g., between 8 and 18 mm ([0196]; overlaps the claimed range of “less than 10 millimeters”) and a bore having a larger bore diameter than any other hollow bore filter element in the filter arrangement ([0053]) that is greater than 3 mm ([0054]; “internal diameter of at least 2 millimeters”).
This means that Lord’s upstream filter element may have a wall thickness in the range of 0 mm ((5-5)/2) to 9 mm ((10-1)/2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hufnagel such that (1) the hollow cellulose acetate tube has a wall thickness of 0 to 9 mm as in Lord and (2) the transfer section has an axial length less than 20 mm (e.g., between 5 and 15 mm or between 8 and 18 mm) and a bore diameter greater than 3 mm (e.g., between 3 and 7 mm) as in Lord because (a) the modification to the diameters of the hollow cellulose acetate tube and transfer section would cause vapors passing through the hollow cellulose acetate tube to expand into the larger axial bore of the transfer section to result in effective cooling/mixing (Lord; [0057]), (b) the modification to the diameter and length of transfer section maximizes the volume of the axial bore to maximize mixing/cooling of the generated vapors (Lord; [0054]), and (c) such a modification involves a mere change in the size on of an element. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04(IV)(A). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 21, modified Hufnagel further discloses a flavor precursor compound including 2-hydroxy-4-(methylthio)butyric acid ([0031]; “an acid”).
Regarding claims 24 and 27, modified Hufnagel discloses the mouthpiece filter is a conventional mouthpiece filter formed from cellulose acetate tow ([0072]; “fibrous filtration material”).
However, modified Hufnagel is silent as to wherein a length of the mouthpiece element is at least 10 millimeters.
Lord further teaches the terminal filter element (5, 5d) is comprised of cellulose acetate ([0051]) and may have an axial length be less than 20 mm (for example between 10 and 12 mm) ([0052]).
It would have been obvious to said skilled artisan to have modified Hufnagel’s mouthpiece filter to be less than 20 mm long, e.g., 10-12 mm long, as in Lord because such a modification involves a mere change in the size on of an element. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04(IV)(A). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 25, modified Hufnagel discloses the transfer section having a length of axial length between 5-15 mm (Lord; [0407]) and the mouthpiece filter having a length less than 20 mm (e.g., between 10-12 mm) (Lord; [0052]). Therefore, the mouthpiece filter is -5 mm (10-15) to 7 mm (12-5) longer than the transfer section (overlapping “length of the mouthpiece element is at least 2 mm greater than a length of the aerosol-cooling element”). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 26, modified Hufnagel discloses wherein the aerosol-forming substrate has a diameter of between 5 and 10 mm (Lord; [0047]), and wherein the cooling element/intermediate filter element has a diameter substantially matching the diameter of the aerosol-forming substrate ([0052]) and a bore diameter of diameter of between 3 and 7 mm (Lord; [0252], see also [0571], describing a diameter of 4 mm).
Therefore, modified Hufnagel discloses the modified transfer section has a wall thickness of 0 (the diameter of the transfer section is the same as the diameter of the bore) to 3.5 mm ((10-3)/2). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 28, modified Hufnagel further discloses a front-plug (103; “upstream element”) provided upstream of the rod of aerosol-generating substrate (see Fig. 2).
Regarding claim 29, modified Hufnagel discloses the length of the transfer section between 5 and 15 mm (Lord; [0407]).
However, modified Hufnagel is silent as to a ratio between a length of the aerosol-cooling element and a length of the rod of aerosol-generating substrate is 0.25 to 1.
Lord further teaches the aerosol-forming substrate may have an axial length of between 10 and 15 mm ([0047]).
It would have been obvious to said skilled artisan to have modified Hufnagel’s rod of aerosol forming substrate to have a length of 10-15 mm as in Lord because such a modification involves a mere change in the size on of an element. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04(IV)(A).
This means that modified Hufnagel would have a ratio of length of aerosol-cooling element to length of aerosol-generating substrate of 0.33 (5/15) to 1.5 (15/10). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hufnagel et al. in view of Lord et al. as applied to claim 15 above, and further in view of Abi Aoun (US 2023/0010782; of record).
Regarding claims 16-17, modified Hufnagel discloses the aerosol-generating article as discussed above with respect to claim 15, wherein the aerosol-generating substrate comprises a gel ([0045]).
However, modified Hufnagel is silent as to the aerosol-generating substrate further comprises a plug of porous medium loaded with the gel composition, wherein the porous medium is in the form of a crimped sheet.
Abi Aoun teaches a method of manufacturing an amorphous solid comprising an aerosol-former material (title) comprising forming a slurry comprising a particulate botanical material, gelling agent, and aerosol-former ([0034]), forming a layer of the slurry ([0035]) and drying the slurry to provide a sheet of amorphous solid ([0036]), wherein the aerosol-generating material is provided on a support in the form of a carrier sheet such that both the carrier sheet and sheet of aerosol-generating material is crimped [0052]; “crimped sheet”) which is then gathered to form a rod ([0033]; “porous medium loaded with the gel composition”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hufnagel’s aerosol-generating substrate to be a crimped and gathered sheet of aerosol-generating substrate and carrier sheet as in Abi Aoun in order to obtain an aerosol-generating substrate with higher flavor loading that is stabilized at high concentration and have a good shelf life (Abi Aoun; [0027]).
Claims 16 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hufnagel et al. in view of Lord et al. as applied to claim 15 above, and further in view of Jeong et al. (US 2022/0175015; of record).
Regarding claims 16 and 18, modified Hufnagel discloses the aerosol-generating article as discussed above with respect to claim 15, wherein the aerosol-generating substrate comprises a gel ([0045]).
However, modified Hufnagel is silent as to the aerosol-generating substrate further comprises a plug of porous medium loaded with the gel composition, wherein the porous medium comprises cotton fibers.
Jeong teaches a gel aerosol-forming substrate cartridge (abstract) comprising a gel aerosol-forming substrate that exists in a gel, semi-solid form, or solidified form ([0007]) received in a gel receptor ([0007], [0015]; “porous medium loaded with the gel composition”), wherein the gel receptor is made by crumpling or rolling a cotton woven or non-woven fabric into a cylindrical shape ([0019] “cotton fibers”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hufnagel’s aerosol-generating substrate to be cotton that includes the gel aerosol-forming substrate as in Jeong in order to allow the composition to remain absorbed in the gel receptor without flowing out resulting in much greater amount of aerosol than existing heated cigarettes (Jeong; [0071]).
Regarding claim 19, modified Hufnagel is silent as to the plug of porous medium loaded with the gel composition is circumscribed by a water repellent wrapper.
Jeong further teaches wrapping paper wrapped around the side of the gel receptor ([0007]), wherein the wrapping paper (61) is a laminated paper made by attaching aluminum foil to paper and is wrapped such that the aluminum foil comes into contact with the gel receptor to eliminate or minimize the possibility that the gel aerosol-forming substrate in liquid from dampening the gel receptor may flow through the side of the gel aerosol-forming substrate cartridge ([0073]; “water repellant wrapper”).
It would have been obvious to said skilled artisan to have added the laminated paper made of aluminum foil and paper as in Jeong to modified Hufnagel’s aerosol-forming substrate in order to eliminate or minimize the possibility that liquid, including water, flows through the side of the cartridge (Jeong; [0073]).
Claims 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hufnagel et al. in view of Lord et al. as applied to claim 15 above, and further in view of Ghanouni et al. (US 2021/0315266; of record).
Regarding claims 20 and 22, modified Hufnagel discloses the aerosol-generating article as discussed above with respect to claim 15, wherein the aerosol-generating substrate comprises a gel ([0045]) having at least nicotine ([0045]; “alkaloid compound”),
However, modified Hufnagel is silent as to the gel composition further comprises at least 1 percent by weight of nicotine and between 1 percent by weight and 6 percent by weight of the at least one gelling agent.
Ghanouni teaches an aerosol generating substrate comprising an aerosol generating material comprising an amorphous solid (abstract), wherein the amorphous solid comprises 1-50% wt% of a gelling agent ([0033]), 10-80 wt% of an aerosol generating agent ([0034]) and optionally 10-60 wt% of a tobacco extract and/or nicotine and/or flavorants ([0032]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hufanagel’s gel having nicotine to have 1-50 wt% of a gelling agent and 10-60 wt% nicotine as in Ghanouni because such a modification involves optimization within prior art conditions. “[W]here 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.” See MPEP 2144.05(II)(A).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Hufnagel et al. in view of Lord et al. as applied to claim 15 above, and further in view of Mironov et al. (US 2016/0150825; of record).
Regarding claim 23, modified Hufnagel discloses a heating element (113) is located within the aerosol-forming substrate such that heat generated by the heating element is transferred by conduction to the aerosol-forming substrate ([0073]).
However, modified Hufnagel is silent as to an elongate susceptor element extending in a longitudinal direction through the rod of aerosol-generating substrate.
Mironov teaches an aerosol-generating article with a multi-material susceptor (title) comprising a an aerosol-forming substrate (20; Fig. 3) and an elongate bi-layer susceptor (4) within the aerosol-forming substrate (Fig. 3, [0126]) wherein the elongate susceptor extends in a longitudinal direction through the aerosol-generating substrate (see Fig. 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Hufnagel’s heating element for Mironov’s elongate bi-layer susceptor in order to allow heating to be optimized and temperature of the susceptor to be controlled without direct temperature monitoring (Mironov; abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Cheong et al. (US 2020/0359677) teaches an aerosol-generation article comprising a cooling element (33) having a second hollow tube (332), wherein the second hollow tube has a length of 7 mm and an inner diameter of 3.4 mm ([0069]), wherein a ratio of the diameter D2 to D1 is greater than 1.0 ([0057]), and as the diameter D2 decreases, the probability that aerosol having an increased particle size collides with the second hollow tube increases which may not sufficiently delivery ingredients to the user ([0065]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Y 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.
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755