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
This office action is in response to Applicant’s amendment filed on 09 June 2026:
Claims 16-29 are pending
Claim 16 is amended
Claims 1-15 are cancelled
Claim 29 is new
Response to Arguments
Applicant’s arguments with respect to Claims 16-29 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-22, 24 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Borge et al (Publication No. US20160143355A1), in view of Johnson et al (Publication No. US5095922A).
Regarding Claim 16, Borges discloses an aerosol-generating article (i.e., smoking article) for producing an aerosol upon heating (Abstract, [0214]), the aerosol-generating article comprising:
a rod of aerosol-forming substrate (10) (see Fig. 1; [0020, 0252]; discloses that the substrate is a plug; figure shows a plug that appears rod-shaped);
and a filter positioned downstream of the rod of aerosol-forming substrate (10), the filter further comprising a hollow tubular segment (28) (Fig. 1; [0222-0224, 0258]; hollow tube of cellulose acetate is considered equivalent to a filter component);
wherein the rod of aerosol-forming substrate (10) and the filter are assembled within a wrapper (Outer wrapper 20) (see Fig. 1; [0255]; Wrapper is shown to wrap around both the substrate and cellulose filter components);
and first air ingress zone (First air inlets A) and second air ingress zone (Third air inlets E) located on the wrapper (20), the first and the second air ingress zones each being configured to allow ingress of air into an interior of the aerosol-generating article (Smoking article 2) (Fig. 1; [0255, 0261-0262]);
wherein the first air ingress zone (A) is located along an upstream half of the rod of aerosol-forming substrate (10) (see Fig. 1; [0254]); and
the second air ingress zone (E) is located along the filter (see Fig. 1; [0261]; the second air ingress zone/inlet are disposed on the hollow tubular segment component of the filter).
Borges further discloses that the aerosol forming substrate typically comprise an aerosol former such as glycerine [0012], but does not explicitly disclose that the aerosol-forming substrate having an aerosol former content of greater than 10 percent on a dry weight basis.
However, Johnson, directed to a tobacco smokable material (i.e., aerosol-forming substrate) for manufacturing cigarettes, discloses said tobacco smokable material is an expanded tobacco filler, wherein the expansion renders said tobacco filler material the advantage of lower density and reduced weight when employed in cigarette manufacturing (Abstract; Col. 1, Lines 16-19).
The expanded tobacco filler material is prepared by contacting tobacco material to a humectant like glycerin, propylene glycol, triethylene glycol (i.e., aerosol former) such that the quantity of humectant/aerosol former applied to the tobacco material is less than about 15 percent, preferably 1 to 12 percent by dry weight of tobacco material (Abstract, Col. 5, Lines 24-35; disclosed humectant examples are the same as the aerosol formers disclosed by the Applicant, therefore they are considered equivalent; disclosed humectant weight percentage range is within the claimed range of greater than about 10 percent).
The claimed range for aerosol former overlaps with the humectant/aerosol former range disclosed by Johnson and are therefore considered prima facie obvious (see MPEP § 2144.05.I).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to substitute the tobacco smoking material disclosed by Borges with the expanded tobacco smoking material as disclosed by Johnson, as both are directed to a smokable material for cigarettes, where Johnson teaches the advantage of expanded tobacco material with less than 15 percent humectant/aerosol former which has a lower density and reduced weight when employed in cigarette manufacturing (Col. 1, Lines 16-19).
Regarding Claim 17, Borge further discloses the filter of the aerosol-generating article (2) comprises a mouthpiece segment (18) comprising a plug of filtration material arranged downstream of the rod of aerosol-forming substrate (10) (Fig. 1; [0222-0224, 0249, 0256]); and
wherein the hollow tubular segment (28) is located between the mouthpiece segment (18) and the rod of aerosol-forming substrate (10) (see Fig. 1; the tubular segment is shown to be located between the substrate and mouthpiece).
Regarding Claim 18, Borge further discloses the filter of the aerosol-generating article (2) further comprises an aerosol-cooling element (14) located between the mouthpiece segment (18) and the hollow tubular segment (28) (see Fig. 1; [0243]; the cooling element is shown between the tubular and mouthpiece segment, abutting the tubular segment).
Regarding Claim 19, Borge does not explicitly disclose the second air ingress zone (E) is located at least 2 mm downstream of the first air ingress zone (A). However, it should be noted that the courts have held that, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see MPEP § 2144.05.II).
In this case, Borge discloses that the tubular segment (28) is a transfer element (12) which can have a length that varies from 7 mm to about 50 mm [0228-0229, 0246], while the aerosol-forming substrate (10) has a length that is between 5 mm and 20 mm [0220]. Relative to these measurements, Borge further discloses that the first inlet (A) can be located on the substrate such that is 3 mm from the combustible heat source upstream end, while the third inlet (E) is located 5 mm from the upstream end of the tubular segment (28) (see Fig. 1; [0261]; see Table 1).
With the length measurements provided by Borge, it would be well within the ambit of one ordinarily skilled in the art to routinely optimize the length of the transfer tubular element (12/28) and the substrate (10) such that the second ingress zone (E) is located at least 2 mm downstream of the first air ingress zone (A).
Regarding Claim 20, Borge does not explicitly disclose the second air ingress zone (E) is located at least 12 mm downstream of the first air ingress zone (A). However, it should be noted that the courts have held that, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see MPEP § 2144.05.II).
In this case, Borge discloses that the tubular segment (28) is a transfer element (12) which can have a length that varies from 7 mm to about 50 mm [0228-0229, 0246], while the aerosol-forming substrate (10) has a length that is between 5 mm and 20 mm [0220]. Relative to these measurements, Borge further discloses that the first inlet (A) can be located on the substrate such that is 3 mm from the combustible heat source upstream end, while the third inlet (E) is located 5 mm from the upstream end of the tubular segment (28) (see Fig. 1; [0261]; see Table 1).
With the length measurements provided by Borge, it would be well within the ambit of one ordinarily skilled in the art to routinely optimize the length of the transfer tubular element (12/28) and the substrate (10) such that the second ingress zone (E) is located at least 12 mm downstream of the first air ingress zone (A).
Regarding Claim 21, Borge further discloses the first air ingress zone (A) is located at least 2 mm downstream of an upstream end of the rod of aerosol-forming substrate (10) (see Fig. 1; [261]; see Table 1; the inlet A is disclosed to be 3 mm from the upstream end).
Regarding Claim 22, Borge further discloses the second air ingress zone (E) is located at least 2 mm downstream of an upstream end of the hollow tubular segment (see Fig. 1; [261]; see Table 1; the inlet E is disclosed to be 5 mm from the upstream end).
Regarding Claim 24, Borge further discloses the first air ingress zone (A) or the second air ingress zone (E) comprises a plurality of apertures extending through the wrapper (20) (see Fig. 1; [0014, 0021, 0114, 0261-0262]; the air inlet zones are shown to extend through the wrapper).
Regarding Claim 29, Borges discloses an aerosol-generating article (i.e., smoking article) for producing an aerosol upon heating (Abstract, [0214]), the aerosol-generating article comprising:
a rod of aerosol-forming substrate (10) (see Fig. 1; [0020, 0252]; discloses that the substrate is a plug; figure shows a plug that appears rod-shaped);
and a filter positioned downstream of the rod of aerosol-forming substrate (10), the filter further comprising a hollow tubular segment (28) (Fig. 1; [0222-0224, 0258]; hollow tube of cellulose acetate is considered equivalent to a filter component);
wherein the rod of aerosol-forming substrate (10) and the filter are assembled within a wrapper (Outer wrapper 20) (see Fig. 1; [0255]; Wrapper is shown to wrap around both the substrate and cellulose filter components);
and first air ingress zone (First air inlets A) and second air ingress zone (Third air inlets E) located on the wrapper (20), the first and the second air ingress zones each being configured to allow ingress of air into an interior of the aerosol-generating article (Smoking article 2) (Fig. 1; [0255, 0261-0262]);
wherein the first air ingress zone (A) is located along the rod of aerosol-forming substrate (10) (see Fig. 1; [0254]); and
the second air ingress zone (E) is located along the filter (see Fig. 1; [0261]; the second air ingress zone/inlet are disposed on the hollow tubular segment component of the filter);
and wherein the aerosol-generating article (2) further comprises an upstream section (Transfer element 12) at a location upstream of the rod of aerosol-generating substrate (10) (see Fig. 1; [0243]).
Borges further discloses that the aerosol forming substrate typically comprises an aerosol former such as glycerine [0012], but does not explicitly disclose that the aerosol-forming substrate having an aerosol former content of greater than 10 percent on a dry weight basis.
However, Johnson, directed to a tobacco smokable material (i.e., aerosol-forming substrate) for manufacturing cigarettes, discloses said tobacco smokable material is an expanded tobacco filler, wherein the expansion renders said tobacco filler material the advantage of lower density and reduced weight when employed in cigarette manufacturing (Abstract; Col. 1, Lines 16-19).
The expanded tobacco filler material is prepared by contacting tobacco material to a humectant like glycerin, propylene glycol, triethylene glycol (i.e., aerosol former) such that the quantity of humectant/aerosol former applied to the tobacco material is less than about 15 percent, preferably 1 to 12 percent by dry weight of tobacco material (Abstract, Col. 5, Lines 24-35; disclosed humectant examples are the same as the aerosol formers disclosed by the Applicant, therefore they are considered equivalent; disclosed humectant weight percentage range is within the claimed range of greater than about 10 percent).
The claimed range for aerosol former overlaps with the humectant/aerosol former range disclosed by Johnson and are therefore considered prima facie obvious (see MPEP § 2144.05.I).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to substitute the tobacco smoking material disclosed by Borges with the expanded tobacco smoking material as disclosed by Johnson, as both are directed to a smokable material for cigarettes, where Johnson teaches the advantage of expanded tobacco material with less than 15 percent humectant/aerosol former which has a lower density and reduced weight when employed in cigarette manufacturing (Col. 1, Lines 16-19).
Claims 23 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Borge et al (Publication No. US20160143355A1), in view of Johnson et al (Publication No. US5095922A) as applied to Claim 16 above, and further in view of Besso et al (Publication No. US20170280766A1).
Regarding Claim 23, Borge does not explicitly disclose that the first and/or second air ingress zones comprise a porous portion of the wrapper.
However, Besso, directed to a smoking article, discloses a hydrophobic tipping paper that circumscribes portions of the smoking article such as the mouthpiece and one or more filter segments ([0019]; Borge’s hollow segment is considered equivalent to a filter segment). The tipping paper can be constructed from an untreated wrapper paper with an air permeability ranging from 0 to 10,000 Coresta units [0026]. When treated to become hydrophobic, the porosity is reduced by less than 10% ([0026]; considered to still be porous), generating a hydrophobic paper that is capable of inhibiting the transfer, absorption and accumulation of humectant, water and staining of the tipping paper that occurs when the smoking article is stored or utilized in a humid environment [0032].
It should be noted that Borge discloses a set of second air ingress zones/inlets (E) that are located on the hollow tubular segment (28) which is considered a component of the overall filter component (see Claim 16 rejection for component mapping). As such, one ordinarily skilled in the art, when applying Besso’s tipping paper to Borge’s smoking article, would have the tipping paper encompass the hollow tubular segment and result in the second inlets (E) being on the porous tipping paper.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the wrapper disclosed by Borge to incorporate a porous tipping paper as disclosed by Emmett, as both are directed to a smoking article, where Besso teaches the advantage of using a hydrophobic tipping paper that is capable of inhibiting the transfer, absorption and accumulation of humectant, water and staining of the tipping paper that occurs when the smoking article is stored or utilized in a humid environment [0032].
Regarding Claim 25, Borge does not disclose that the first air ingress zone has a porosity of at least 3000 Coresta units.
However, Besso, directed to a smoking article, discloses a paper wrapper comprising a tipping paper that joins the filter to the tobacco substrate rod [0012]. The tipping paper can be constructed from an untreated wrapper paper with an air permeability ranging from 0 to 10,000 Coresta units [0026]. When treated to become hydrophobic, the porosity is reduced by less than 10% ([0026]; 10% reduction would result in a wrapper paper with 9,000 Coresta units which is more than 3,000 Coresta units), generating a hydrophobic paper that is capable of inhibiting the transfer, absorption and accumulation of humectant, water and staining of the tipping paper that occurs when the smoking article is stored or utilized in a humid environment [0032].
It is noted that while Besso applies the treatment to the tipping paper, the tipping paper is made from wrapping paper, which can be considered equivalent to Borge’s wrapping paper which also encompasses the filter, mouthpiece and substrate portions. Furthermore, Besso also notes that the tipping paper can also include perforations for ventilation [0027], similar to having air inlets on Borge’s wrapping paper. As such, one ordinarily skilled in the art would recognize that the tipping paper can function as the wrapping paper disclosed by Borge to secure the components of the smoking article, resulting in the first air ingress zone (A) having a porosity of at least 3000 Coresta units due to being located on the porous wrapper.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the wrapper disclosed by Borge to incorporate a porous wrapper paper as disclosed by Emmett, as both are directed to a smoking article, where Besso teaches the advantage of using a hydrophobic tipping paper that is capable of inhibiting the transfer, absorption and accumulation of humectant, water and staining of the tipping paper that occurs when the smoking article is stored or utilized in a humid environment [0032].
Regarding Claim 26, Borges does not disclose that the first air ingress zone has a porosity of less than 25000 Coresta units.
However, Besso, directed to a smoking article, discloses a paper wrapper comprising a tipping paper that joins the filter to the tobacco substrate rod [0012]. The tipping paper can be constructed from an untreated wrapper paper with an air permeability ranging from 0 to 10,000 Coresta units [0026]. When treated to become hydrophobic, the porosity is reduced by less than 10% ([0026]; 10% reduction would result in a wrapper paper with 9,000 Coresta units which less than 25000 Coresta), generating a hydrophobic paper that is capable of inhibiting the transfer, absorption and accumulation of humectant, water and staining of the tipping paper that occurs when the smoking article is stored or utilized in a humid environment [0032].
It is noted that while Besso applies the treatment to the tipping paper, the tipping paper is made from wrapping paper, which can be considered equivalent to Borge’s wrapping paper which also encompasses the filter, mouthpiece and substrate portions. Furthermore, Besso also notes that the tipping paper can also include perforations for ventilation [0027], similar to having air inlets on Borge’s wrapping paper. As such, one ordinarily skilled in the art would recognize that the tipping paper can function as the wrapping paper disclosed by Borge to secure the components of the smoking article, resulting in the first air ingress zone (A) having a porosity of less than 25000 Coresta units due to being located on the porous wrapper.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the wrapper disclosed by Borge to incorporate a porous wrapper paper as disclosed by Emmett, as both are directed to a smoking article, where Besso teaches the advantage of using a hydrophobic tipping paper that is capable of inhibiting the transfer, absorption and accumulation of humectant, water and staining of the tipping paper that occurs when the smoking article is stored or utilized in a humid environment [0032].
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Borge et al (Publication No. US20160143355A1), in view of Johnson et al (Publication No. US5095922A) as applied to Claim 16 above, and further in view of Emmett et al (Publication No. US20140318562A1).
Regarding Claim 27, Borge further discloses the wrapper (20) of the aerosol-generating article (2) can comprise of a low air permeable material [0243], but does not explicitly state that it is an air-impermeable material.
However, Emmett, directed to a smoking article, the article can utilize wrappers made from papers that are considered air-impermeable, wherein the set criteria is having an air permeability of 100 Coresta units or less [0059-0060]. As such, one ordinarily skilled in the art would recognize that if a material has low air permeability such as the one disclosed by Emmett, said material can be considered essentially air impermeable.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, that the low air-permeable wrapper disclosed by Borge can be essentially an air-impermeable material so long as the air permeability value is low as disclosed by Emmett, as both are directed to a smoking article, where this applies a known teaching disclosed by Emmett, regarding what is considered as an air impermeable material, to a similar wrapper material disclosed by Borge.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (Publication No. US20200345075A1, cited in IDS dated 06 September 2022) Borge et al (Publication No. US20160143355A1), in view of Johnson et al (Publication No. US5095922A).
Regarding Claim 28, Hepworth discloses an aerosol-generating system (100) comprising aerosol-generating article (Consumable 102) and an aerosol-generating device (i.e., Aerosol provision device 104) having a distal end (125) and a mouth end (124) (Hepworth, Paragraph 0036), the aerosol generating system further comprising:
a housing (110) defining a device cavity (i.e., hollow cylindrical tube) configured to removably receive the aerosol-generating article (consumable article 102) at the mouth end (Opening 132) of the device (Hepworth, Fig. 4; Paragraphs 0036-0037; Consumable material is inserted via opening into the hollow cylindrical tube heater arrangement 134);
a heater (Heater arrangement 134) configured to heat the aerosol-forming substrate when the aerosol-generating article is received within the device cavity (Hepworth, Fig. 4, Paragraph 0037);
and an air-flow channel (Air flow path A) extending between a channel inlet (112) and a channel outlet (Distal end 121), the air-flow channel being configured to establish a fluid communication between the interior of the device cavity (Heating arrangement 134; hollow cylindrical tube) and an exterior of the aerosol-generating device (Hepworth, Fig. 4; Paragraphs 0041 and 0047; Air can be drawn from the outside into the housing through the air inlet implies fluid communication);
wherein the aerosol-generating system is configured so that, when the aerosol- generating article is received within the device cavity, fluid communication between the interior of the aerosol-generating article and the exterior of the aerosol-generating device is established by a fluid communication being established between the first air ingress zone of the aerosol-generating article received within the device cavity and the air-flow channel of the aerosol-generating device (Hepworth, Fig. 4, Paragraph 0077; there is fluid communication between the second inlet (402) and the ventilation zone (108), allowing air to flow into the housing to the ventilation zone through the Flow path C).
Hepworth further discloses that the aerosol-generating article (i.e., consumable) may be a rod, cartridge/cassette, or any similar form that can be inserted into the apparatus (Hepworth, Paragraph 0028) that comprises:
an aerosol-forming substrate (Aerosolisable material 106);
a filter (Filter segment 204);
and an air ingress zone (Ventilation region 108) located on the cooling segment (Hepworth, Fig. 2; Paragraph 0042).
Hepworth does not disclose the aerosol-generating article having additional features such as a hollow tubular segment, first and second air ingress zones, or the specific orientation of the aerosol-generating article parts as described in Claim 16.
However, Borge as applied to Claim 16 above, discloses an aerosol-generating article according to Claim 16 (see 103 Rejection of Claim 16). The aerosol-generating article disclosed by Borge is rod-shaped with air inlets (air ingress zone) and the device disclosed by Hepworth is designed to accept rod-shaped consumables with ventilation holes (i.e., aerosol-generating article) to be heated and generate aerosols (Hepworth, Abstract; Paragraphs 0028 and 0042).
Therefore, it would have been obvious to one ordinarily skilled in the art to modify the aerosol-generating system disclosed by Hepworth by combining the aerosol-generating device disclosed by Hepworth with the aerosol-generating article disclosed by Borge as applied to Claim 16, so long as the article is insertable into the device to be heated; this also involves combining prior art elements according to a known method (i.e., inserting the article into the device) to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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