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 16-21 and 23-29 are pending and are subject to this Office Action.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 3/02/2026 containing remarks to the claims.
Response to Arguments
Applicant's arguments filed 3/02/2026 have been fully considered but they are not persuasive.
On pages 3-4, the Applicant argues that the upstream plug element described in Malgat would be unsuitable for use with the cigarette of Hwang as all of the articles described in Malgat incorporate an elongate susceptor element within the rod of aerosol-generating substrate, whereas the cigarette of Hwang is adapted to be used with an aerosol-generating device including a pin heater. The Examiner does not find this to be persuasive. As the heater of the aerosol-generating device in Hwang is configured to be inserted into the aerosol-generating material of the cigarette (see Hwang [0023]-[0024]), one of ordinary skill in the art would expect that the heater could also be inserted through other elements of the cigarette, such as an upstream plug element. Further, as Malgat teaches the upstream plug element covers the distal end of the article and may give it a pleasant appearance and also provide information on the article, one of ordinary skill in the art would be motivated to modify the aerosol-generating article of Hwang with the upstream plug element of Malgat to provide a pleasant appearance and give information on the article.
On page 4, the Applicant argues that the person or ordinary skill in the art would only look to the teachings related to articles in which there is an upstream plug element in the form of a hollow tube, since these would be the only embodiments that would clearly be compatible with the use of a pin heater. The Examiner does not find this to be persuasive. First, the heater of Hwang is not identified as a pin heater. Hwang merely teaches that heater 130 is inserted into the aerosol generating material ([0023]-[0024]) and does not specify whether it is in the form of a pin, a needle, a blade, etc., or whether the heater is a resistive heating element or a susceptor element. Further, as the heater of Hwang is configured to be inserted into the aerosol-generating material of the cigarette, one of ordinary skill in the art would expect that the heater could also be inserted through other elements of the cigarette, such as an upstream plug element without a hollow tube.
On pages 4-5, the Applicant further argues that the downstream structure of the articles and the lengths of different components will have a significant impact on the desired RTD of an upstream element, and merely because two articles are both “heated” does not mean that the technical features, such as RTD, can be interchanged when those articles have a different construction and are heated in different ways. The Examiner does not find this to be persuasive. First, Hwang merely teaches that heater 130 is inserted into the cigarette, and does not provide more specificity on the heater, whether it is a resistive heating element or susceptor for induction heating, and therefore it is not evident that the articles of Hwang and Malgat are heated in different ways as the Applicant suggests. Further, Hwang teaches that the structure of the cigarette shown is merely an example, and the cigarette 600 may further include other components in addition to the components 610 to 640 illustrated in FIG. 6, or some of the components 610 to 640 illustrated in FIG. 6 may be omitted ([0101]). Therefore, it is evident that the cigarette of Hwang is flexible on the downstream structure of the cigarette. As such, one of ordinary skill in the art would expect that the desired RTD of an upstream element would also be flexible and thus be motivated to incorporate the upstream plug element of Malgat with the RTD as taught by Malgat to provide a pleasant appearance and give information on the article.
On page 5, the Applicant further argues that the inclusion of an upstream element with an RTD of at least 5 mm H2O would make it harder for the consumer to draw aerosol through the cigarette and as such, would go against the aim of Hwang to improve aerosol transfer. The Examiner does not find this to be persuasive. First, Hwang teaches that the structure of the cigarette shown is merely an example, and the cigarette 600 may further include other components in addition to the components 610 to 640 illustrated in FIG. 6, or some of the components 610 to 640 illustrated in FIG. 6 may be omitted ([0101]). Therefore, as it is evident that the cigarette of Hwang is flexible on the overall RTD of the cigarette, and one of ordinary skill in the art would not expect that the inclusion of an upstream element with an RTD of at least 5 mm H2O would go against the aim of Hwang as the Applicant suggests. Further, the invention of Hwang is to provide a corrugated inner wrapper, a passage through which an aerosol passes is provided between the corrugated inner wrapper and the outer wrapper to increase the amount of aerosol transfer ([0008]), and Hwang would still be capable of providing the corrugated inner wrapper to increase the amount of aerosol transfer even with the inclusion of Malgat’s upstream plug element.
The following is the maintained rejection.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 16-21, 24-25, and 27-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO2020/009415, citations will refer to the English equivalent US2021/0259303) in view of Malgat (WO2017/153443).
Regarding claims 16-18, 20, and 28 Hwang teaches:
An aerosol-generating article for producing an inhalable aerosol upon heating (cigarette 600, figure 6, [0101]), the aerosol-generating article comprising:
A rod of aerosol-generating substrate (tobacco rod 610, figure 6, [0101]).
A mouthpiece element (mouthpiece 640) having a length L1 and comprising at least one mouthpiece filter segment formed of a fibrous filtration material (wherein the mouthpiece includes a cellulose acetate filter ([0077], [0109]), which the Applicant discloses is a fibrous filtration material (see page 6, paragraph 5 of the Applicant’s specification).
An intermediate hollow section between the rod of aerosol-generating substrate and the mouthpiece element (first support segment 620 and second support segment 630, figure 6, [0104]), the intermediate hollow section having a length L2 and comprising:
An aerosol-cooling element (second support segment 630) downstream of the rod of aerosol-generating substrate (as shown in figure 6), the aerosol-cooling element comprising a hollow tubular segment defining a longitudinal cavity providing an unrestricted flow channel (wherein the second support segment 630 may include a tube-shaped structure indicating a hollow therein, [0104]).
A support element between the aerosol-cooling element and the rod of aerosol-generating substrate (first support segment 620, [0103]), wherein an upstream end of the aerosol-cooling element abuts a downstream end of the support element (as shown in figure 6).
Hwang is silent to the lengths of the lengths of the components of the embodiment of the cigarette as shown in figure 6. However, Hwang further teaches that for ease of description, the descriptions overlapping with figure 3 will be omitted ([0102]). Therefore, it is evident that the lengths of the components in figure 6 would be the lengths of the corresponding components of figure 3. Hwang further teaches:
The length of the cooling segment 330 is between 7 mm and 30 mm ([0074]), and therefore it is evident that the length of the second support segment 630 (i.e. the aerosol-cooling element) is between 7 mm and 30 mm. The range taught by the prior art overlaps the claimed range of less than 10 millimeters and therefore established a prima facie case of obviousness.
The length of the support segment 320 is between 4 mm and 30 mm ([0069]), and therefore it is evident that the length of the first support segment 620 (i.e. support element) is between 4 mm and 30 mm, and the length L2 of the intermediate hollow section (first support segment 620 and second support segment 630) is between 11 mm and 60 mm. The range taught by the prior art overlaps the claimed range of no more than 18 millimeters as recited in claim 28 and therefore established a prima facie case of obviousness.
The length of the mouthpiece 340 is between 4 mm and 30 mm ([0077]), and therefore it is evident that the length of the mouthpiece 640 (i.e. the mouthpiece element) is between 4 mm and 30 mm. The range taught by the prior art overlaps the claimed range of greater than 10 millimeters as recited in claim 20 and therefore established a prima facie case of obviousness.
An overall length of the smoking article may be about 48 mm (length of the cigarette may be about 48 mm [0038]). Therefore a ratio between the length L1 of the mouthpiece element and an overall length of the aerosol-generating article is between 0.083 and 0.625. The range taught by the prior art overlaps the claimed range of at least 0.22 and therefore established a prima facie case of obviousness.
As the length L1 of the mouthpiece element is about 0.07 to 2.73 times the length L2 of the intermediate hollow section, the range taught by the prior art overlaps the claimed range of at least 0.4 times as recited in claim 16, of at least 0.6 times as recited in claim 17, and at least 0.75 times as recited in claim 18, and therefore establishes a prima facie case of obviousness.
Hwang does not appear to disclose an upstream element provided upstream of the rod of aerosol-generating substrate, wherein the resistance to draw (RTD) of the upstream element is at least 5 millimeters H2O.
Malgat, directed to an aerosol-generating article, teaches:
An aerosol-generating article 10 comprising an aerosol-forming substrate 20 (i.e. rod of aerosol-generating substrate) and a plug element 90 (i.e. upstream element) upstream of the aerosol-forming substrate (figure 1, page 22, last paragraph).
A resistant to draw of the plug element may be between 20 and 40 millimeters H2O (millimeters water gauge, page 4, fourth paragraph).
A plug element preferably also improves an aesthetic appearance of the article and may provide simple measures to provide further information on the article to a user (page 2, last paragraph).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the smoking article of Hwang by incorporating an upstream element upstream of the aerosol-forming substrate as taught by Malgat, because both Hwang and Malgat are directed to smoking articles with a rod of aerosol-generating substrate, Malgat teaches the upstream element improves the aesthetic appearance of the article and provides further information on the article to a user, and this merely involves incorporating a known aerosol-generating article element (i.e. plug element) to a similar aerosol-generating article to yield predictable results.
The upstream element having a resistance to draw of between 20 and 40 millimeters H2O falls within the claimed range of at least 5 millimeters H2O.
Regarding claim 19, Hwang teaches wherein the length L1 of the mouthpiece element is between -3 and 23 millimeters greater than the length of the cooling element (wherein the mouthpiece element is between 4 mm and 30 mm ([0077]) and the aerosol-cooling element is between 7 mm and 30 mm ([0074]). The range taught by the prior art overlaps the claimed range of at least 2 millimeters greater and therefore established a prima facie case of obviousness.
Regarding claim 21, Hwang further teaches that the mouthpiece may include a cellulose acetate filter and may be made of a recess filter ([0077]), which reads on a mouthpiece filter segment. Therefore it is evident that the mouthpiece filter segment is the same length as the mouthpiece element, that being between 4 mm and 30 mm ([0077]). As the length L2 of the intermediate hollow section (first support segment 620 and second support segment 630) is between 11 mm and 60 mm ([0069] and [0074]), the mouthpiece filter segment is about 0.07 to 2.73 times the length L2 of the intermediate hollow section.
The range taught by the prior art overlaps the claimed range of at least 0.4 times and therefore established a prima facie case of obviousness.
Regarding claim 24, Hwang further teaches that the hollow tubular segment of the aerosol-cooling element (i.e. second support segment 630) has a diameter between 7 mm and 9 mm and an inner diameter between 3 mm and 5.5 mm ([0104]). Therefore the wall thickness is between 0.75 mm and 3 mm.
The range taught by the prior art overlaps the claimed range of less than 2.5 millimeters and therefore established a prima facie case of obviousness.
Regarding claim 25, Hwang further teaches wherein the aerosol-cooling element further comprises a ventilation zone at a position along the hollow tubular segment (perforations 631, figure 6, [0107]).
Regarding claim 27, Hwang further teaches wherein the support element comprises a hollow tubular segment defining a longitudinal cavity providing an unrestricted flow channel (wherein the first support segment 620 may include a tube-shaped structure including a hollow therein ([0104]), and as shown in figure 6).
Regarding claim 29, Hwang further teaches that a length of the cigarette may be about 48 mm ([0038]). About 48 mm is considered to comprises the range +/- 10%, that being between 43.2 mm and 52.8 mm. The range taught by the prior art overlaps the claimed value of 45 millimeters and therefore established a prima facie case of obviousness.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO2020/009415, citations will refer to the English equivalent US2021/0259303) as applied to claim 16 above, and further in view of Uthurry (WO2018/224679).
Regarding claim 23, Hwang further teaches that the mouthpiece element includes a cellulose acetate filter ([0077], [0109]). Hwang is silent to the RTD of the mouthpiece element.
Uthurry, directed to an aerosol-generating article, teaches:
An aerosol generating article (100) that comprises a filter segment (105) at the mouth-end (7) of the article (figure 1, page 12, paragraphs 3-4). The filter segment at the mouth-end of the articles defines a mouthpiece element.
A filter segment that has a resistance to draw of about 0.4 mm H20 to about 3 mm H20 per millimeter length (page 3, first paragraph). Preferably the fibers of the filter segment comprise cellulose acetate (page 3, fourth paragraph).
Therefore, before the effective filing date of the claimed invention, it would be
obvious for one having ordinary skill in the art to make the cellulose acetate filter within the mouthpiece element of Hwang have a resistance to draw of about 0.4 mm H20 to about 3 mm H20 per millimeter length as taught by Uthurry. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP § 2144.07.
As the mouthpiece element has a length between 4 mm and 30 mm ([0077]), this would yield a resistance to draw (RTD) of the mouthpiece element to be between 1.6 to 90 millimeters H20. The range taught by the prior art overlaps the claimed range of less than 15 millimeters H20 and therefore established a prima facie case of obviousness.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO2020/009415, citations will refer to the English equivalent US2021/0259303) as applied to claim 16 above, and further in view of Zuber (US2014/0345634).
Regarding claim 26, Hwang does not appear to disclose wherein the rod of aerosol-generating substrate comprises a gel composition.
Zuber, directed to a smoking article, teaches:
A solid aerosol-forming substrate may be provided on or embedded in a thermally stable carrier in the form of, for example, a gel ([0034]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to substitute the aerosol-generating substrate of Hwang with the aerosol-forming substrate that is provided on a thermally stable cable carrier in the form of a gel as taught by Zuber, because both Zuber and Hwang are directed to aerosol-generating articles with rods of aerosol-generating substrates, and this merely involves substituting a known aerosol-forming substrate to a similar aerosol-generating article to yield predicable results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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.
/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755