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 16-29 are pending and are subject to this office action. Claims 16, 19, 22-29 are amended.
Examiner Comment
This action is a non-final rejection due to the new grounds of rejection presented below.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 02/27/2026 containing remarks to the claims.
Response to Arguments
Applicant’s arguments with respect to claim 16 under 35 U.S.C. 103 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 16, 18, 20-21, 23-29 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (US 20220132913 A1) in view of Seo (US 20220248746 A1).
Regarding claim 16, Yang discloses a smoking article (100, “an aerosol generating article”) for producing an aerosol upon heating (Fig. 4, [0075, 0077]) comprising:
A smoking material portion (110, “a rod of aerosol generating substrate”. Fig. 4, Fig. 5, [0075, 0077]),
A downstream section downstream of the smoking material portion (110) comprising a second filter segment (130, “cooling element”) in longitudinal alignment with the smoking material portion (110), the second filter segment (130) having a length of 7 to 20 mm (Fig. 4, [0075, 0089, 0092]). The claimed length range overlaps with the range by the prior art and therefore the claimed length range is considered prima facie obvious.
Yang does not explicitly disclose the second filter segment (130, “cooling element”, Fig. 4) comprises a hollow tubular segment with a ventilation zone along the hollow tubular segment having a ventilation level of 25-45%.
However, Seo, directed to a smoking article (100, Fig. 4 [0074]), discloses:
A cooling structure (130) having a hollow section (130H) to maximize the cooling effect (Fig. 4, Fig. 5, [0089, 0090]).
A plurality of perforations (160, “a ventilation zone at a location along the hollow tubular segment”) penetrates the cooling structure (130) which allows outside air to flow into the hollow section (130H) of the cooling structure (Fig. 4, Fig. 5, 130, [0095]), where the cooling structure (130) has an air dilution rate of 0 to 50% ([0024, 0098]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious. The Examiner notes that the air dilution rate of the cooling structure is considered to be a volume ratio of air admitted into the article via the ventilation zone and a sum of airflow from the rod of substate and ventilation airflow.
The plurality of perforations (160) serves to lower a surface temperature of the mouthpiece and a temperature of the mainstream smoke delivered to a smoker during smoking ([0096]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Yang by forming the second filter segment of a perforated hollow tubular cooling structure having an air dilution rate of 0-50% as taught by Seo because both Yang and Seo are directed to aerosol generating articles, Seo teaches hollow cooling structure maximizes the cooling effect and the perforations lower the temperature of the mainstream smoke delivered to the smoker, and this involves applying a known cooling structure and perforations to a similar smoking article to yield predictable results.
Regarding claim 18, Yang discloses another embodiment where the smoking article (300) comprises a front-end filter segment (350, “upstream element”) which prevents the smoking material portion (310) from detaching from the article (300, Fig. 6, [0148-0150]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Yang, in view of Seo, by providing a front end filter segment at the upstream end of the article as taught by Yang because both Yang and Yang are directed to aerosol generating articles, Yang teaches that the front end filter segment prevents the smoking material portion from detaching, and this involves applying a known upstream element to a similar aerosol generating article to yield predictable results.
Regarding claim 20, Yang discloses the smoking article (100) comprises a first filter segment (120, “support element”) located upstream of the cooling element (130) and downstream of the smoking material (110), the first filter segment (120) being in longitudinal alignment with the smoking material (110, Fig. 4, [0083]).
Regarding claim 21, Yang discloses the downstream section comprises a mouthpiece element (140) located downstream of the cooling element (130, Fig. 4, [0107]).
Regarding claim 23, Yang discloses the cooling element (130) has a length of 7 to 20 mm (Fig. 4, [0075, 0089, 0092]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
Regarding claim 24, Yang discloses the cooling element (130) has a length of 7 to 20 mm (Fig. 4, [0075, 0089, 0092]) and a length of the smoking article (100) may be 45-50mm ([0076]). Therefore, Yang discloses a smoking article where a ratio of the length of the hollow tubular segment to the length of the aerosol generating article is in a range that overlaps with the claimed range of less than 0.3 and therefore the claimed range is considered prima facie obvious.
Regarding claim 25, Yang discloses the cooling element (130) has a length of 7 to 20 mm (Fig. 4, [0075, 0089, 0092]) and a length of the smoking material portion (110) may be 12 mm ([0076]). Therefore, Yang discloses a smoking article where a ratio of the length of the hollow tubular segment to the length of the rod of aerosol generating substrate is in a range that overlaps with the claimed range of less than 0.9 and therefore the claimed range is considered prima facie obvious.
Regarding claim 26, Yang, in view of Seo, does not explicitly disclose a thickness of a peripheral wall of the hollow tubular segment of the cooling element.
Seo discloses the cooling structure (130) may have an inner diameter of 3.75-7.5mm ([0092]) and the inner diameter is 90-95% of the outer diameter ([0026, 0091-0092]).
Therefore, a person having ordinary skill in the art could have reasonably arrived at a smoking article having a cooling element with an inner diameter range that overlaps with the claimed range and therefore the claimed range is considered prima facie obvious.
Regarding claim 27, Seo discloses the cooling structure (130) has an air dilution rate of 0 to 50% ([0024, 0098]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious. The Examiner notes that the air dilution rate of the cooling structure is considered to be a volume ratio of air admitted into the article via the ventilation zone and a sum of airflow from the rod of substate and ventilation airflow.
Regarding claim 28, Yang, in view of Seo, does not explicitly disclose the distance between the ventilation zone and an upstream of the hollow tubular segment of the cooling element.
However, Yang discloses a second filter segment (130, “cooling element”) having a length of 7 to 20 mm (Fig. 4, [0075, 0089, 0092]) and Seo discloses the perforations (160, “ventilation zone”) are positioned 5 to 10 mm (L1, Fig. 5) from a downstream end of the cooling structure (130) to prevent interference with the smokers lips during smoking (Fig. 5, [0099]).
Therefore, a person having ordinary skill in the art could have reasonably arrived at a smoking article having a distance between perforations (Seo: 160, “ventilation zone”) and upstream end of the cooling element (Yang: 130) in a range that overlaps with the claimed range of at least 2mm and therefore the claimed range is considered prima facie obvious.
Regarding claim 29, Seo discloses the inner diameter of the cooling structure (130) may be 3.75 to 7.5mm ([0092]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over
Yang (US 20220132913 A1) in view of Seo (US 20220248746 A1), as applied to claim 16 above, further in view of Mironov (US 20160150825 A1).
Regarding claim 17, Yang discloses the smoking article (100) may comprise a susceptor ([0055]).
Yang does not explicitly disclose an elongate susceptor arranged longitudinally in the rod of aerosol generating substrate.
However, Mironov, directed to an aerosol generating article (10, Fig. 3, [0126]), discloses:
An elongate susceptor (4) arranged longitudinally in an aerosol forming substrate (20, Fig. 3, [0126]), and;
The susceptor is part of the consumable article which promotes more consistent flavor by using a fresh susceptor for each article ([0029]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Yang, in view of Seo, by arranging an elongate susceptor longitudinally in the smoking material portion as taught by Mironov because both Yang and Mironov are directed to aerosol generating articles, Yang teaches the aerosol generating article may comprise a susceptor but silent to the location of the susceptor, Mironov discloses an elongate susceptor arranged in the aerosol forming substrate which promotes more consistent flavor by using a fresh susceptor for each article, and this involves applying a known elongate susceptor to a similar smoking article to yield predictable results.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (US 20220132913 A1) in view of Seo (US 20220248746 A1), as applied to claim 16 above, further in view of Malgat (WO 2017153443 A1, as cited in IDS dated 11/21/2022).
Regarding claim 19, Yang discloses a front-end filter segment (350, “upstream element”, Fig. 6, [0148-0150]).
Yang is silent to the resistance to draw of the upstream element.
However, Malgat, directed to an aerosol generating article (10, Fig. 1, pg. 22 lines 21-30), discloses:
A plug element (90, “upstream element”) having a draw resistance of 20-40 mmH2O (pg. 4 lines 9-17). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Yang, in view of Seo, by providing the upstream element with a suction resistance of 20-40 mm H2O as taught by Malgat because both Yang and Malgat are directed to aerosol generating articles, Yang is silent to the resistance to draw of the upstream element, Malgat teaches a similar smoking article comprising an upstream element with a known range of draw resistance, and one having ordinary skill in the art would be motivated to look to similar smoking articles for workable ranges of upstream element draw resistance and this involves applying known draw resistance to a similar upstream element in a similar smoking article to yield predictable results.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (US 20220132913 A1) in view of Seo (US 20220248746 A1), as applied to claim 16 above, further in view of Cheong (US 20200352220 A1).
Regarding claim 22, Yang a mouthpiece element (140) having a length of 4-20mm (Fig. 4, [0107-0108]).
Yang is silent to the resistance to draw of the mouthpiece element.
However, Cheong, directed to an aerosol generating article (300, Fig. 5, [0074]), discloses
A rear end filter segment (423, i.e. a mouthpiece element) having a suction resistance of 1 to 30mmWG/mm (Fig. 5, [0074, 0088]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Yang by providing the mouthpiece element with a suction resistance of 1 to 30mmWG/mm as taught by Cheong because both Yang and Cheong are directed to aerosol generating articles, Yang is silent to the resistance to draw of the mouthpiece, Cheong teaches a similar smoking article comprising a mouthpiece element with a known range of draw resistance per unit length, and one having ordinary skill in the art would be motivated to look to similar smoking articles for workable ranges of mouthpiece element draw resistance and this involves applying known draw resistance to a similar mouthpiece element in a similar smoking article to yield predictable results.
Therefore, a person having ordinary skill in the art, in view of the upstream element length disclosed by Yang and resistance to draw per unit length disclosed by Cheong, could have reasonably arrived at a smoking article comprising an upstream element with a draw resistance in a range that overlaps with the claimed range and therefore the claimed range is considered prima facie obvious.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18, 26-28 of copending Application No. 17/904,645.
Although the claims at issue are not identical, they are not patentably distinct from each other. The co-pending claims and the rejected claims differ in that the features of the rejection independent claim are present in multiple claims of the copending application. However, it would have been obvious to one of ordinary skill in the art to combine the features of the dependent claims to arrive at the instantly claimed invention.
The claims further differ in that the co-pending claims include different, but overlapping ranges for the ventilation level. Claim 16 of the instant application requires a ventilation level of 25-45% whereas claim 27 of the conflicting claims requires a ventilation level of at least 10% and claim 28 of the conflicting claims requires a ventilation level less than 40%.
Therefore, all of the elements of provisionally rejected claims 16 are present and obvious over conflicting claims 18, 26-28 of co-pending Application No. 17/904,645.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hwang (US 20210259303 A1) discloses a cigarette (600) comprising a tobacco rod (610), a downstream section comprising a hollow tubular second support segment (630, “cooling element”) having a length of 7-30 mm ([0074]), where perforations (“a ventilation zone”) is formed along the second support segment (630, Fig. 6, [0101-0109]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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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.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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