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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/07/2026 has been entered.
Status of the Claims
Claims 16-21 and 23-30 are pending and are subject to this Office Action.
Claim 16 is amended.
Claim 30 is new.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 7/07/2026 containing remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 6-10, filed 7/07/2026, with respect to the rejection(s) of claim(s) 16 under 35 USC 103 have been fully considered and are persuasive. The Applicant has amended the claim to require the mouthpiece element having an external diameter substantially equal to the external diameter of the aerosol-generating article and wherein the RTD of the mouthpiece element is at least 10 millimeters H2O, whereas previously this was not required. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously applied art and newly found art.
The following is a modified rejection based on the amendments made to the claims.
Claim Objections
Claim 28 is objected to because of the following informalities:
Claim 28, line 2, recites “a length of the intermediate hollow section” and should instead recite “the length L2 of the intermediate hollow section” to maintain consistent terminology throughout the claims. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-21 and 23-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16, line 9, recites “the RTD of the mouthpiece element is at least 10 millimeters H2O”. However, original application only describes the mouthpiece element having an RTD of less than about 25 millimetres H20, 20 millimetres H2O, or 15 millimetres H20 (see page 7, lines 24-27, of the instant specification) or values of RTD from about 10 millimetres H2O to about 15 millimetres H2O (see page 7, line 28, of the instant specification). There is no support in the original application of the RTD of the mouthpiece element being at least 10 millimeters H2O with no upper limit.
Claims 17-21 and 23-30 are similarly rejected for being dependent on claim 16.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 21, line 2, recites “wherein the mouthpiece element further comprises a mouthpiece filter segment”. However claim 21 depends on claim 16 which recites “a mouthpiece element…comprising at least one mouthpiece filter segment”. It is unclear if the mouthpiece filter segment of claim 21 is referring to the at least one mouthpiece filter segment of claim 16, or a different mouthpiece filter segment. For purposes of examination “a mouthpiece filter segment” as recited in claim 21 is considered to be the at least one mouthpiece filter segment of claim 16.
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, 23-25, and 27-30 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) and Phillips (US2022/0167661).
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) and having an external diameter that is substantially equal to the external diameter of the aerosol-generating article (as shown in fig. 6, the external diameter of mouthpiece 640 is equal to the external diameters of all the other components of cigarette 600).
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 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 (I) 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 and (II) wherein the RTD of the mouthpiece element is at least 10 millimeters H2O.
In regard to (I) 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.
In regard to (II), Hwang is silent to the RTD of the mouthpiece element.
However Phillips, directed to a component for an article for use in an aerosol delivery system, teaches:
An article 1 with a mouthpiece 2 (fig. 21) and the pressure drop of the mouthpiece can be at least 10 mmH2O to slow down the aerosol as it passes through the mouthpiece such that the temperature of the aerosol has time to reduce before reaching the downstream end of the mouthpiece ([0137]).
Therefore, before the effective filing date of the claimed invention it would be obvious for one having ordinary skill in the art to configure the mouthpiece element of Hwang to have a pressure drop of at least 10 mm H2O as taught by Philips, because both Hwang and Phillips are directed to mouthpiece element of aerosol generating articles, Phillips teaches this slows down the aerosol to allow time for the temperature of the aerosol to reduce before reaching the downstream end of the mouthpiece, and this merely involves incorporation of a known pressure drop of a mouthpiece element to a similar aerosol generating article to yield predictable results.
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 23, modified Hwang teaches wherein the RTD of the mouthpiece element is at least 10 millimetres H2O (see claim 16 above). The range taught by the prior art overlaps the claimed range of less than 15 millimetres H2O and is therefore prima facie obvious.
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.
Regarding claim 30, Hwang is silent to the ventilation level of the article.
However, Phillips further teaches that the target ventilation level of the article can be within the range of 40% to 70% and that the variations with ventilation due to manufacturing tolerances have less of an impact at lower target ventilation levels ([0165]).
Therefore, as Hwang is silent to the ventilation level of the article, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of ventilation levels of aerosol generating articles that one of ordinary skill could apply to Hwang with a reasonable expectation of success in the ventilation level being suitable for the article.
As such it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to make the ventilation level of the article of Hwang be between 40% and 70% as taught by Phillips, because both Hwang and Phillips are directed to aerosol generating articles with ventilation, Phillips teaches manufacturing variations with low ventilation levels have less of an impact on temperature, and this merely involves incorporating a known ventilation level of an aerosol generating article to a similar aerosol generating article to yield predictable results.
The range taught by the prior art overlaps the claimed range of a ventilation level from about 28 percent to about 42 percent and is therefore prima facie obvious.
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) in view of Malgat (WO2017/153443) and Phillips (US2022/0167661) 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
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.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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