DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s Request for continued examination filed March 30, 2026. Claim 24 has been canceled. Claim 27 is new. Claims 14-23 and 25-27 are pending and stand rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 30, 2026 has been entered.
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.
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 14-23 and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over US 20140305448 A1 (hereinafter ZUBER) in view of US 20170238600 A1 (hereinafter GRANT).
Regarding claim 14, ZUBER discloses an aerosol generating article for use with a heating element of an aerosol-generating device (abstract). ZUBER discloses a rod of aerosol-generating substrate (Fig. 1, aerosol-forming substrate 20, ¶178); and a downstream section (Fig. 1, combination of elements 30, 40, and 50) arranged downstream of the rod of aerosol-generating substrate and in axial alignment with the rod of aerosol-generating substrate (as shown in Fig. 1), the downstream section comprising one or more downstream elements (Fig. 1, any of elements 30, 40, and 50).
ZUBER further teaches an upstream element (¶22-¶24) provided upstream of the rod of aerosol-generating substrate, the upstream element being formed of a filter material (¶31). ZUBER teaches an alternative embodiment where the article may comprise a front-plug upstream of the aerosol-forming substrate, where the front plug is penetrable by the heating element (¶22). ZUBER teaches that the front-plug may be configured to prevent egress of the aerosol-forming substrate from the aerosol-generating article (¶24). ZUBER further teaches that the front plug may facilitate the removal of the heating element from the article (¶24) or in addition wipe the surface of the heating element (¶25). ZUBER further teaches that the front-plug may be formed of filter material, like cellulose acetate tow, because this is convenient (¶31).
ZUBER further teaches wherein a resistance to draw of the upstream element is from 5 mm H2O to 40 mm H2O. ZUBER teaches that the aerosol-generating article has an RTD range of 80 mm to 140 mm (¶171). Therefore the RTD of a single segment (i.e. the upstream element), would necessarily be less than 80 mm H2O, and reasonably from 5 mm H2O to 40 mm H2O when fully assembled. Considering that the entire article has an RTD of 80 mm to 140 mm and this includes the tobacco segment that has a much larger RTD than the plug would have so therefore a lower resistance to draw, less than 40 mm, is preferred in the plug to allow passage of air through the article (¶114). ZUBER teaches that the cooling element having a low resistance to draw is preferred to allow passage of air through the article (¶114). ZUBER also teaches that the front-plug is made from an air permeable material to permit ease of draw through the plug (¶30-¶31). Therefore ZUBER encourages lower resistance to draw segments that would lead a person of ordinary skill in the art to control RTD to a lower level in the segments.
Further, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In this case, ZUBER further teaches that the front-plug may be formed of filter material, like cellulose acetate tow, because this is convenient (¶31) with dimensions also included (¶42). This is the same material of the instant application which discloses that the upstream element is comprised of a plug of cellulose acetate with overlapping dimensions (PG Pub of instant application ¶371) . Therefore the resistance to draw is reasonably expected to be in the same range as the instant application.
Finally, ZUBER discloses that the permeability of the front plug may be varied to help control the resistance to draw of the article (¶31). As disclosed in ¶31, the permeability of the front plug influences resistance to draw through the article and as such resistance to draw of the front plug is a result effect variable in that changing the value changes the performance and perception for the user. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the resistance to draw of the upstream article as a matter of routine optimization since it has been held that "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A).
ZUBER does not disclose wherein the aerosol-generating article is arranged such that a center of mass of the aerosol-generating article is at least 60 percent of the way along a length of the aerosol- generating article from a downstream end.
GRANT teaches an apparatus for forming double-length products and transporting the products to a packer (abstract). GRANT teaches that segmented aerosol-forming articles, like those taught by ZUBER, have uneven mass distribution (¶2). GRANT teaches that a segment aerosol-forming article may be inhomogeneous, especially in the distribution of weight, due to the different segments of the combined article (¶11). GRANT teaches that the tobacco plug has a higher density compared to a filter segment or cavity (¶11). Therefore the center of mass is shifted from the midpoint at half length to the distal end thereof (¶11). GRANT discloses the need to solve the problem of the shift in the center of mass in the manufacturing process created by the shift in the midpoint due to the segments (¶2, ¶11). GRANT identifies that during manufacturing, processes can be interrupted when the machine jams as the segments move along due to uneven mass distribution (¶2, ¶8-¶9). GRANT teaches that for inhomogeneous aerosol-forming articles, such as those taught by modified ZUBER, the center of gravity is preferably a distance between a center of mass and the midpoint may be between about 5 percent and about 20 percent (¶27). Therefore the center of mass is between about 55 percent and 70 percent along the way from the downstream end (¶27, claim 7). GRANT teaches that the center of mass is upstream of the tipping paper (Fig. 6, center of mass 14, ¶88).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ZUBER to provide wherein the aerosol-generating article is arranged such that a center of mass of the aerosol-generating article is at least 60 percent of the way along a length of the aerosol- generating article from a downstream end as taught in GRANT. A person of ordinary skill in the art would immediately recognize that the different segments disclosed in ZUBER would have different densities and masses as taught in GRANT. These different masses would alter the center of mass to be between 55 and 70 percent along the way from the downstream end (GRANT ¶27). GRANT is relied on because it recognized that the different segments will have different densities that result in the center of mass for the article being shifted from the midpoint of the article. GRANT therefore teaches a method for solving this problem that exists because segmented products create shifted centers of mass that negatively impact a production process. GRANT teaches the method for improving the production process which is needed because products, like the segmented product of ZUBER, have a range of center of mass that is offset from the midpoint. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 15, modified ZUBER discloses the aerosol-generating article according to claim 14. The limitation wherein the center of mass of the aerosol-generating article is at least 65 percent of the way along the length of the aerosol-generating article from the downstream end, is rejected for the same reason as claim 14 as taught in ZUBER and GRANT with relation to the overlapping range for the movement of the center of mass.
Regarding claim 16, modified ZUBER discloses the aerosol-generating article according to claim 14. The limitation wherein the center of mass of the aerosol-generating article is no more than 70 percent of the way along the length of the aerosol-generating article from the downstream end, is rejected for the same reason as claims 14 and 15 as taught in ZUBER and/or GRANT with relation to the overlapping range for the movement of the center of mass.
Regarding claim 17, modified ZUBER discloses the aerosol-generating article according to claim 14. ZUBER further discloses wherein the downstream section comprises a mouthpiece element (Fig. 1, mouthpiece 50, ¶178) comprising at least one mouthpiece filter segment formed of a fibrous filtration material (¶149).
Regarding claim 18, modified ZUBER discloses the aerosol-generating article according to claim 14. ZUBER further discloses wherein the mouthpiece element has a length of at least 10 millimeters (¶152-¶153). ZUBER discloses a mouthpiece length range between 5 millimeters and 20 millimeters. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 19, modified ZUBER discloses the aerosol-generating article according to claim 14. ZUBER further discloses wherein the downstream section further comprises an intermediate hollow section (Fig. 1, Combination of support element 30 and aerosol-cooling element 40, ¶178) between the rod of aerosol-generating substrate and the mouthpiece element, the intermediate hollow section comprising an aerosol-cooling element (Fig. 1, aerosol-cooling element 40, ¶178) abutting an upstream end of the mouthpiece section, the aerosol-cooling element comprising a hollow tubular segment (Fig. 1, inside hollow) defining a longitudinal cavity providing an unrestricted flow channel.
Regarding claim 20, modified ZUBER discloses the aerosol-generating article according to claim 19. ZUBER further discloses wherein the intermediate hollow section further comprises a support element (Fig. 1, support element 30, ¶178) between the aerosol-cooling element and the rod of aerosol-generating substrate, the support element comprising a hollow tubular segment defining a longitudinal cavity providing an unrestricted flow channel.
Regarding claim 21, modified ZUBER discloses the aerosol-generating article according to claim 19. ZUBER further teaches wherein the hollow tubular segment of the aerosol-cooling element has a wall thickness of less than 2.5 millimeters.
ZUBER teaches that the external diameter of the support element 30 is between 5 millimeters and 12 millimeters (¶92). Therefore when the support element has a diameter of 5 millimeters, in order to provide the hollow unrestricted passageway as shown in Fig. 1, the thickness must be less than 2.5 millimeters. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 22, modified ZUBER discloses the aerosol-generating article according to claim 19. ZUBER further teaches wherein an internal diameter of the hollow tubular segment of the aerosol-cooing element is at least 3 millimeters.
ZUBER teaches that the external diameter of the support element 30 is between 5 millimeters and 12 millimeters (¶92). Therefore when the support element has a diameter of 12 millimeters, the internal diameter of the hollow tubular segment of the aerosol-cooing element is at least 3 millimeters. As shown in Fig. 1, the hollow is of equal area of the support element. Therefore, at 12 millimeters, the area when shown in cross section would be 12 millimeters/3 sections = internal diameter of the hollow tubular segment of 4 millimeters which is at least 3 millimeters. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 23, modified ZUBER discloses the aerosol-generating article according to claim 14. ZUBER further discloses an elongate susceptor element (Fig. 2, heating element 120, ¶188) extending longitudinally through the rod of aerosol-generating substrate.
Regarding claim 25, modified ZUBER discloses the aerosol-generating article according to claim 14. ZUBER further teaches wherein a resistance-to-draw of the upstream element is from 20 mm H20 to 40 mm H20 (¶171) for the same reasons discussed in the rejection of claim 14 above.
Regarding claim 26, modified ZUBER discloses the aerosol-generating article according to claim 14. ZUBER further teaches wherein the downstream section comprises a mouthpiece element, and wherein a resistance-to-draw of the upstream element is at least 1.5 times a resistance- to-draw of the mouthpiece element.
ZUBER teaches that the resistance to draw of the aerosol generating article is between 80 mm WG and 140 mm WG (¶171). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Though ZUBER does not explicitly teach the resistance-to-draw of each element, the fact that the total resistance to draw is between 80 mm WG and 140 mm WG establishes ranges that are greater than the 20 mm H2O recited in the instant application. ZUBER further teaches that the front-end plug may be formed from an air permeable or an air impermeable material and varied to help control the resistance to draw of the aerosol-generating article (¶30-¶32). Further ZUBER teaches that the mouthpiece is formed from an air permeable material (¶31). Therefore when the plug, upstream element, is formed from an air impermeable material (¶32) and the mouthpiece is formed from an air permeable material (¶31), it would be obvious to one of ordinary skill in the art that the upstream element is at least 1.5 times a resistance to draw of the mouthpiece element since the air permeable material of the mouthpiece would have essentially a negligible resistance to draw.
Regarding claim 27, ZUBER discloses an aerosol generating article for use with a heating element of an aerosol-generating device (abstract). ZUBER discloses a rod of aerosol-generating substrate (Fig. 1, aerosol-forming substrate 20, ¶178); a downstream section (Fig. 1, combination of elements 30, 40, and 50) arranged downstream of the rod of aerosol-generating substrate and in axial alignment with the rod of aerosol-generating substrate (as shown in Fig. 1), the downstream section comprising: an aerosol-cooling element (Fig. 1, combination of support element 30 and aerosol cooling element 40, ¶178) comprising a hollow tubular segment (Fig. 1, support element 30, ¶178) that defines an internal cavity (¶91) extending all the way from an upstream end of the aerosol-cooling element to a downstream end of the aerosol-cooling element, wherein the internal cavity is substantially empty (¶91, ¶181). As with the instant application, the vapor cools through both the support element and then more cooling occurs in the cooling element 40. This is an inherent result of thermodynamics as the vapor moves away from the heat source and experiences heat losses as it proceeds to the mouth end. ZUBER further discloses a mouthpiece element (Fig. 1, mouthpiece 50, ¶178), wherein the mouthpiece element abuts the downstream end of the aerosol-cooling element (as shown in Fig. 1). The structure of both the instant application and ZUBER regarding the arrangement of the upstream element, followed in sequence by the aerosol generating material, the hollow segment, the cooling element, and finally the mouthpiece are structurally identical.
ZUBER further discloses an upstream element (¶22-¶24) provided upstream of the rod of aerosol-generating substrate, the upstream element being formed of a filter material. (¶31). ZUBER teaches an alternative embodiment where the article may comprise a front-plug upstream of the aerosol-forming substrate, where the front plug is penetrable by the heating element (¶22). ZUBER teaches that the front-plug may be configured to prevent egress of the aerosol-forming substrate from the aerosol-generating article (¶24). ZUBER further teaches that the front plug may facilitate the removal of the heating element from the article (¶24) or in addition wipe the surface of the heating element (¶25). ZUBER further teaches that the front-plug may be formed of filter material, like cellulose acetate tow, because this is convenient (¶31).
ZUBER further teaches wherein a resistance to draw of the upstream element is from 5 mm H2O to 40 mm H2O. ZUBER teaches that the aerosol-generating article has an RTD range of 80 mm to 140 mm (¶171). Therefore the RTD of a single segment (i.e. the upstream element), would necessarily be less than 80 mm H2O, and reasonably from 5 mm H2O to 40 mm H2O when fully assembled. Considering that the entire article has an RTD of 80 mm to 140 mm and this includes the tobacco segment that has a much larger RTD than the plug would have a lower resistance to draw, less than 40 mm, is preferred to allow passage of air through the article (¶114). Additionally, ZUBER teaches that the aerosol-cooling element has a large surface area and a low resistance to draw providing advantages for inhalation by the user in contrast to other high resistance to draw filters and mouthpieces (¶17). ZUBER teaches that the cooling element having a low resistance to draw is preferred to allow passage of air through the article (¶114). Therefore ZUBER encourages lower resistance to draw segments that would lead a person of ordinary skill in the art to control RTD to a lower level in the segments. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In this case, ZUBER further teaches that the front-plug may be formed of filter material, like cellulose acetate tow, because this is convenient (¶31) with dimensions also included (¶42). This is the same material of the instant application which discloses that the upstream element is comprised of a plug of cellulose acetate with overlapping dimensions (PG Pub of instant application ¶371) . Therefore the resistance to draw is reasonably expected to be in the same range as the instant application.
Finally, ZUBER discloses that the permeability of the front plug may be varied to help control the resistance to draw of the article (¶31). As disclosed in ¶31, the permeability of the front plug influences resistance to draw through the article and as such resistance to draw of the front plug is a result effect variable in that changing the value changes the performance and perception for the user. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the resistance to draw of the upstream article as a matter of routine optimization since it has been held that "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A).
ZUBER does not disclose wherein the aerosol-generating article is arranged such that a center of mass of the aerosol-generating article is at least 60 percent of the way along a length of the aerosol- generating article from a downstream end.
GRANT teaches an apparatus for forming double-length products and transporting the products to a packer (abstract). GRANT teaches that segmented aerosol-forming articles, like those taught by ZUBER, have uneven mass distribution (¶2). GRANT teaches that a segment aerosol-forming article may be inhomogeneous, especially in the distribution of weight, due to the different segments of the combined article (¶11). GRANT teaches that the tobacco plug has a higher density compared to a filter segment or cavity (¶11). Therefore the center of mass is shifted from the midpoint at half length to the distal end thereof (¶11). GRANT discloses the need to solve the problem of the shift in the center of mass in the manufacturing process created by the shift in the midpoint due to the segments (¶2, ¶11). GRANT identifies that during manufacturing, processes can be interrupted when the machine jams as the segments move along due to uneven mass distribution (¶2, ¶8-¶9). GRANT teaches that for inhomogeneous aerosol-forming articles, such as those taught by modified ZUBER, the center of gravity is preferably a distance between a center of mass and the midpoint may be between about 5 percent and about 20 percent (¶27). Therefore the center of mass is between about 55 percent and 70 percent along the way from the downstream end (¶27, claim 7). GRANT teaches that the center of mass is upstream of the tipping paper (Fig. 6, center of mass 14, ¶88).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ZUBER to provide wherein the aerosol-generating article is arranged such that a center of mass of the aerosol-generating article is at least 60 percent of the way along a length of the aerosol- generating article from a downstream end as taught in GRANT. A person of ordinary skill in the art would immediately recognize that the different segments disclosed in ZUBER would have different densities and masses as taught in GRANT. These different masses would alter the center of mass to be between 55 and 70 percent along the way from the downstream end (GRANT ¶27). GRANT is relied on because it recognized that the different segments will have different densities that result in the center of mass for the article being shifted from the midpoint of the article. GRANT therefore teaches a method for solving this problem that exists because segmented products create shifted centers of mass that negatively impact a production process. GRANT teaches the method for improving the production process which is needed because products, like the segmented product of ZUBER, have a range of center of mass that is offset from the midpoint. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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.
Claims 14-23 and 25-27 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 17904645 (reference application) (PG Pub US 20230102463 A1 relied on for citations). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims have overlapping recitations . The missing recitations are rendered obvious by the written description as filed.
This is a provisional nonstatutory double patenting rejection.
Regarding claim 14, ‘645 discloses [a]n aerosol-generating article for producing an inhalable aerosol upon heating, the aerosol-generating article comprising: a rod of aerosol-generating substrate; a downstream section arranged downstream of the rod of aerosol-generating substrate and in axial alignment with the rod of aerosol-generating substrate, the downstream section comprising one or more downstream elements; and an upstream element provided upstream of the rod of aerosol-generating substrate (claim 1). ‘645 further discloses, wherein a resistance to draw of the upstream element is from 5 mm H20 to 40 mm H20 (claim 30). ‘645 further discloses and wherein the aerosol-generating article is arranged such that a center of mass of the aerosol-generating article is at least 60 percent of the way along a length of the aerosol- generating article from a downstream end (claim 1.).
‘645 further discloses the upstream element being formed of a filter material (¶315).
Regarding claim 15, ‘645 discloses the center of mass of the aerosol-generating article is at least 65 percent of the way along the length of the aerosol-generating article from the downstream end (¶334).
Regarding claim 16, ‘645 discloses the center of mass of the aerosol-generating article is no more than 70 percent of the way along the length of the aerosol-generating article from the downstream end (¶335).
Regarding claim 17, ‘645 discloses wherein the downstream section comprises a mouthpiece element (claim 29) comprising at least one mouthpiece filter segment formed of a fibrous filtration material (¶279).
Regarding claim 18, ‘645 discloses wherein the mouthpiece element has a length of at least 10 millimeters (¶371).
Regarding claim 19, ‘645 discloses wherein the downstream section further comprises an intermediate hollow section between the rod of aerosol-generating substrate and the mouthpiece element, the intermediate hollow section comprising an aerosol-cooling element abutting an upstream end of the mouthpiece section, the aerosol-cooling element comprising a hollow tubular segment defining a longitudinal cavity providing an unrestricted flow channel (¶166, ¶169).
Regarding claim 20, ‘645 discloses wherein the intermediate hollow section further comprises a support element between the aerosol-cooling element and the rod of aerosol-generating substrate, the support element comprising a hollow tubular segment defining a longitudinal cavity providing an unrestricted flow channel (¶166-¶169).
Regarding claim 21, ‘645 discloses wherein the hollow tubular segment of the aerosol-cooling element has a wall thickness of less than 2.5 millimeters (¶177).
Regarding claim 22, ‘645 discloses wherein an internal diameter of the hollow tubular segment of the aerosol-cooling element is at least 3 millimeters (¶177).
Regarding claim 23, ‘645 discloses an elongate susceptor element extending longitudinally through the rod of aerosol-generating substrate (claim 18).
Regarding claim 25, ‘645 discloses wherein a resistance-to-draw of the upstream element is from 20 mm H20 to 40 mm H20 (¶310-¶312.)
Regarding claim 26, ‘645 discloses wherein the downstream section comprises a mouthpiece element (claim 29), and wherein a resistance-to-draw of the upstream element is at least 1.5 times a resistance- to-draw of the mouthpiece element (¶310-¶312 compared to claim 30).
Regarding claim 27, ‘645 discloses An aerosol-generating article for producing an inhalable aerosol upon heating, the aerosol-generating article comprising: a rod of aerosol-generating substrate; a downstream section arranged downstream of the rod of aerosol-generating substrate and in axial alignment with the rod of aerosol-generating substrate, the downstream section comprising: an aerosol-cooling element comprising a hollow tubular segment that defines an internal cavity extending all the way from an upstream end of the aerosol-cooling element to a downstream end of the aerosol-cooling element, wherein the internal cavity is substantially empty; and a mouthpiece element, wherein the mouthpiece element abuts the downstream end of the aerosol-cooling element; and an upstream element provided upstream of the rod of aerosol-generating substrate, the upstream element being formed of a filter material, wherein a resistance to draw of the upstream element is from 5 mmH2O to 40 mmH2O,wherein the aerosol-generating article is arranged such that a center of mass of the aerosol-generating article is at least 60 percent of the way along a length of the aerosol- generating article from a downstream end.
This combination claim is found to be a double patented claim for the citations provided above teaching all the combination of limitations found here.
Response to Arguments
Applicant’s amendments and arguments, filed March 30, 2026, with respect to the rejections of claims 14-23 and 25-26 under 35 USC 103 have been fully considered and are not persuasive.
The affidavit under 37 CFR 1.132 filed March 30, 2026 is insufficient to overcome the rejection of claims 14-23 and 25-26 based upon the obviousness rejection under 35 USC 103 as informed by ZUBER in view of GRANT as set forth in the last Office action.
The affidavit argues, “I found no express teaching that corresponds to an RTD of an
upstream element. I also did not find any teaching of an RTD of 5 mm H₂O to 40 mm H₂O for any element or device. Based on my expertise and experience in the field of aerosol-generating articles I conclude that Zuber does not teach an RTD of an upstream element of 5 mm H₂O to 40 mm H₂O.” As a first matter, when a 103 obviousness rejection is made, there is no express teaching of the RTD.
As explained above, the structure, materials of construction, and considerations to optimize and select a resistance to draw support that the range of RTD disclosed by the instant application is indeed taught in ZUBER.
ZUBER teaches that the upstream element is formed of the same material of the upstream element of the instant application, namely cellulose acetate tow. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Here the burden has shifted to applicant to show that the RTD is not the same where the material is the same.
The affidavit further argues, “Zuber only describes the RTD of the aerosol-generating article when a heating element of an aerosol-generating device is inserted into the aerosol-generating article. Zuber does not, in fact, teach or provide any way to derive the RTD of an aerosol-generating articles in isolation. “ This argument is not germane to the patentability. The resistance to draw is feature that is examined and sensed by a user when the article is being consumed. The instant application does not measure the RTD of an isolated article. RTD is measured by measuring flow. ZUBER need not provide a way to derive the RTD in isolation for the RTD experienced by the user to be overlapping with the instant application where as explained above the materials of construction are the same. Further, as recited, the claim does not require RTD in “isolation” or “before usage”. ZUBER clearly discloses desirable total resistance to draw for the articles in (¶171) and this overlaps sufficiently for an obvious rejection for overlapping ranges as detailed above.
The affidavit further argues, “The Examiner's assumption that the RTD of a single segment - e.g., the upstream element - would be below 80 mmH₂O is also incorrect because the article in Zuber may have ventilation. See, Zuber, 1 [0032]. For this reason the RTD of a single segment could be arbitrarily high, such as greater than 140 mmH₂O.” Since ZUBER expressly discloses that the RTD of the entire article is 80 to 140, no single segment can have an RTD of greater than 140 and where the entire article is only 80, it must be less than 80. It is reasonable that the RTD of the upstream segment of ZUBER is less than the disclosed 40 of the instant application. ZUBER encourages a range of RTDs (like the instant application) depending on lengths, materials, permeability, etc. the RTDs will vary. There is inherency of the disclosed RTD range of the instant application due to the structural and material overlapping properties. Further since ZUBER encourages and instructs optimization of the RTD the range is reasonably taught and supported in view of rationale found in 2143 that there is motivation to adapt the air permeability of the front plug to control the overall resistance to draw. ZUBER teaches that the RTD must be optimized so that the user can draw air through the plug. This would motivate a person of ordinary skill in the art to provide a low RTD so that air can easily be drawn through the plug (¶30-¶31). Regarding the ventilation, this is an optional feature of ZUBER and therefore does not invalidate the argument as detailed above.
The affidavit argues, “Clearly, air could flow freely through such a hole or a slit, meaning that the RTD of such a front-plug would be negligible (i.e., approximately 0 mm H20 and certainly less than 5 mm H20).” Even in an embodiment where there is a hole or a slit in a portion of the plug, the mass of the plug is still present. So while the RTD through the hole or slit could be zero, the plug would still contribute an RTD. Further as discussed above, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Further, a preferred embodiment or alternate embodiment does not constitute a teaching away where the specification teaches more broadly. See MPEP 2123, II. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Here the slit is optional and when present it is provided for a location for the heating element (¶26). Therefore the RTD is not zero through the plug at the holes/slits because it is closed by the heater.
The affidavit argues, “Based on my experience and expertise I conclude that it is just as likely that by describing a preference for a cooling element having a low resistance to draw Zuber actually creates more opportunity for the other segments to have a higher RTD than they may have had otherwise.” This is considered to be pure conjecture. However, even if the cooling element has a low resistance is not a negative. So since all the elements contribute some type of RTD and there are the following segments, front plug, aerosol generating segment, support, cooling element, and mouthpiece and the front plug is disclosed to have a contribution of resistance to draw as discussed in (¶31) it is reasonable that since the material, position, and acknowledgment that the air permeability is provided to allow draw that the resistance is between 5 and 40.
Conclusion
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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