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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2025 October 14 has been entered.
Claims 15-31 are pending.
Claim Objections
Claim 18 is objected to because of the following informalities:
Claim 18: “the distal end of the device cavity” should be “a distal end of the device cavity” or “the distal end of the aerosol-generating device” to point to the same distal end recited in claim 15.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 15-19, 21, 23, 25, and 27-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Felter (US 20040089314 A1 cited on an IDS).
Claim 15: Felter teaches an aerosol-generating system (fig. 8 and [38-39]), comprising:
an aerosol-generating article (15) comprising:
a rod of aerosol-forming substrate (tobacco portion surrounded by 130), and a filter (filter end surrounded by 132) positioned downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of the rod of aerosol-forming substrate (tobacco portion surrounded by 130), wherein the rod of aerosol-forming substrate (tobacco portion surrounded by 130) and the filter (filter end surrounded by 132) are assembled within a wrapper (cigarette paper which wraps the tobacco portion and is drawn as a contiguous element at 15’s circumference),
the aerosol-generating article further comprising a first air ingress zone (leftmost circles of 15 through which arrows flow; [Felter 29], Counts (US 5388594 A) is incorporated by reference; Counts fig. 16 and col. 20, lines 60-69, air flows through perforations of web #57 and wrapper #69 into an article #23) located on the wrapper (cigarette paper), the first air ingress zone (leftmost circles of 15) being configured to allow ingress of air into an interior of the aerosol-generating article (15);
and an aerosol-generating device (140 and 300) having a distal end (leftmost end of 300) and a mouth end (rightmost end of 140), the aerosol-generating device comprising:
a housing (bodies of 140 and 300) defining a device cavity (cavity surrounding 15) configured to removably receive the aerosol-generating article (15) at the mouth end (rightmost end of 140) of the aerosol-generating device, a heater (130) configured to heat the aerosol-forming substrate (tobacco portion surrounded by 130) when the aerosol-generating article is received within the device cavity (cavity surrounding 15),
and an air-flow channel (channel through which arrows flow alongside 15) extending between a channel inlet (annotated fig. 8) and a channel outlet (annotated fig. 8), the air-flow channel being configured to establish a fluid communication between an interior of the device cavity (cavity surrounding 15) and an exterior of the aerosol-generating device (140 and 300),
wherein the aerosol-generating system is configured so that, when the aerosol-generating article is received within the device cavity (cavity surrounding 15), fluid communication (arrows flow from outside 140 and 300 through the leftmost circles of 15 into 15) between the interior of the aerosol-generating article (15) and the exterior of the aerosol-generating device (140 and 300) is established by a fluid communication being established between the first air ingress zone (leftmost circles of 15) of the aerosol-generating article received within the device cavity (cavity surrounding 15) and the air-flow channel (channel through which arrows flow alongside 15) of the aerosol-generating device,
wherein the aerosol-generating device further comprises a peripheral wall (interior wall surrounding 15) defining the device cavity (cavity surrounding 15) and a circumferential protrusion (protrusion of 140 adjacent to 132) extending from the peripheral wall (interior wall surrounding 15) into the device cavity (cavity surrounding 15),
and wherein, when the aerosol-generating article is received within the aerosol-generating device, the circumferential protrusion (protrusion of 140 adjacent to 132) is configured to establish an airtight fit (vacuum sensor 146 senses a vacuum created in the cigarette, so 15 and 140 establish an airtight fit) with a portion (portion of 15 adjacent to 17) of the aerosol-generating article at a position downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of the first air ingress zone (leftmost circles of 15) of the aerosol-generating article.
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Claim 16: Felter teaches the aerosol-generating system according to claim 15, wherein the fluid communication (fig. 8 and [38-39], arrows flow from outside 140 and 300 into 15) between the interior of the aerosol-generating article (15) and the exterior of the aerosol-generating device (140 and 300) is established by the air-flow channel outlet (annotated fig. 8) of the aerosol-generating device overlying the first air ingress zone (leftmost circles of 15) of the aerosol-generating article received within the device cavity (cavity surrounding 15).
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Claim 17: Felter teaches the aerosol-generating system according to claim 15, wherein, when the aerosol-generating article (fig. 8 and [38-39], #15) is received within the device cavity (cavity surrounding 15), an upstream end (leftmost end of 15) of the aerosol-generating article is blocked (the leftmost end of 15 is abutted by solid elements) such that air is substantially prevented from entering the aerosol-generating article through the upstream end (leftmost end of 15).
Claim 18: Felter teaches the aerosol-generating system according to claim 15, wherein a diameter of the device cavity (fig. 8 and [38-39], cavity surrounding #15) increases from the circumferential protrusion (protrusion of 140 adjacent to 132) in a direction towards the distal end (leftmost end) of the aerosol-generating device (140 and 300).
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Claim 19: Felter teaches the aerosol-generating system according to claim 15, wherein the circumferential protrusion (fig. 8 and [38-39], protrusion of #140 adjacent to #132) is configured to establish an airtight fit (vacuum sensor 146 senses a vacuum created in the cigarette, so 15 and 140 establish an airtight fit) with a portion (portion of 15 adjacent to 17) of the aerosol-generating article at a position downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of the first air ingress zone (leftmost circles of 15) of the aerosol-generating article.
Claim 21: Felter teaches the aerosol-generating system according to claim 15, wherein the first air ingress zone (fig. 8 and [38-39], leftmost circles of #15) is located along the rod of aerosol-forming substrate (tobacco portion surrounded by 130).
Claim 23: Felter teaches the aerosol-generating system according to claim 15, wherein the filter (fig. 8 and [38-39], filter end surrounded by 140) of the aerosol-generating article comprises: a mouthpiece segment (rightmost segment of 15) comprising a plug of filtration material (filter) arranged downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of the rod of aerosol-forming substrate (tobacco portion surrounded by 130), and a hollow tubular segment (annotated fig. 8) located between the mouthpiece segment (rightmost segment of 15) and the rod of aerosol-forming substrate (tobacco portion surrounded by 130).
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Claim 25: Felter teaches the aerosol-generating system according to claim 15, wherein the aerosol-generating article (fig. 8 and [38-39], #15) further comprises a second air ingress zone (17) located on the wrapper (cigarette wrapper) at a position downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of the first air ingress zone (leftmost circles of 15).
Claim 27: Felter teaches the aerosol-generating system according to claim 25, wherein a level of air ingress into the interior of the aerosol-generating article through the first air ingress zone (fig. 8 and [38-39], leftmost circles of #15) is configured to be greater than a level of air ingress into the interior of aerosol-generating article through the second air ingress zone (vacuum is at a maximum near 132 and 146, so minimal air enters through the second air ingress zone 17).
Claim 28: Felter teaches the aerosol-generating system according to claim 15, wherein the first air ingress zone (fig. 8 and [38-39], leftmost circles of #15) comprises a plurality of apertures extending through the wrapper (cigarette paper).
Claim 29: Felter teaches the aerosol-generating system according to claim 25, wherein the second air ingress zone (fig. 8 and [38-39], #17) comprises a plurality of apertures extending through the wrapper (cigarette paper).
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.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Felter (US 20040089314 A1) as applied to claim 15 in view of Poget (US 20160135495 A1).
Claim 20: Felter teaches the aerosol-generating system according to claim 15.
Felter does not explicitly teach that the wrapper of the aerosol-generating article comprises an air-impermeable material.
Poget teaches an aerosol-generating article (fig. 2 and [181], #2) comprising a rod of aerosol-forming substrate (10), and a filter (28) positioned downstream (arrows flow from leftmost end of 10 to rightmost end of 10) of the rod of aerosol-forming substrate (10), wherein the rod of aerosol-forming substrate (10) and the filter (28) are assembled within a wrapper (16),
the aerosol-generating article further comprising a first air ingress zone ([189], #32) located on the wrapper (16), the first air ingress zone (32) being configured to allow ingress of air into an interior of the aerosol-generating article (2),
wherein the wrapper (16) is preferred to be made of an air-impermeable material [100], such that ingress of air into the aerosol-generating article is limited to the first air ingress zone [189] in order to contain aerosol migration [66].
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 use, as Felter’s generic wrapper material, Poget’s specific air-impermeable wrapper material, because doing so is exemplified by Poget as preferred and would enable ingress of air into the aerosol-generating article to be limited to the first air ingress zone in order to contain aerosol migration.
Claims 22 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Felter (US 20040089314 A1) as applied to claims 15 and 25.
Claim 22: Felter teaches the aerosol-generating system according to claim 15, wherein the first air ingress zone (fig. 8 and [38-39], leftmost circles of #15) is located downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of an upstream end (leftmost end of tobacco portion surrounded by 130) of the rod of aerosol-forming substrate,
wherein the aerosol-generating article has a preferred length of 58 mm ([Felter 29], Counts (US 5388594 A) is incorporated by reference; Counts col. 9, lines 60-63).
Felter does not explicitly teach that the distance between the first air ingress zone and the upstream end of the rod of aerosol-forming substrate is at least 2 mm.
Specifying that Felter’s distance is at least 2 mm would maintain operation of the device. See MPEP 2144.04(IV)(A): Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The courts have held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device.
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 dimension Felter’s distance between the first air ingress zone and the upstream end of the rod of aerosol-forming substrate to at least 2 mm, because doing so would be a patentably indistinct specification of size.
Claim 26: Felter teaches the aerosol-generating system according to claim 25, wherein the second air ingress zone (fig. 8 and [38-39], #17) is located downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of the rod of aerosol-forming substrate (tobacco portion surrounded by 130),
wherein the aerosol-generating article has a preferred length of 58 mm ([Felter 29], Counts (US 5388594 A) is incorporated by reference; Counts col. 9, lines 60-63).
Felter does not explicitly teach that the distance between the second air ingress zone and the rod of aerosol-forming substrate is at least 1 mm.
Specifying that Felter’s distance is at least 1 mm would maintain overall operation of the device. See MPEP 2144.04(IV)(A): Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). The courts have held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device.
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 dimension Felter’s distance between the second air ingress zone and the rod of aerosol-forming substrate to at least 1 mm, because doing so would be a patentably indistinct specification of size.
Claims 24 and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Felter (US 20040089314 A1) as applied to claims 15 and 23 in view of Mironov (US 20150342254 A1).
Claims 24 and 30: Felter teaches the aerosol-generating system according to claims 15 and 23.
Felter does not explicitly teach that the first air ingress zone is located along the hollow tubular segment,
which is at a position downstream of the rod of aerosol-forming substrate.
Mironov teaches an aerosol-generating article (fig. 1 and [155], #100) comprising a rod of aerosol-forming substrate (104), and a filter (138) positioned downstream (arrows flow from leftmost end of 100 to rightmost end of 100) of the rod of aerosol-forming substrate (104), wherein the rod of aerosol-forming substrate (104) and the filter (138) are assembled within a wrapper (112),
the aerosol-generating article further comprising a first air ingress zone (132) located on the wrapper (112), the first air ingress zone (132) being configured to allow ingress of air into an interior of the aerosol-generating article (fig. 1 and [162-166], air flows from outside #100 through #132 into #100), wherein the first air ingress zone (132) is located along a hollow tubular segment (126 and 128), such that directing air upstream cools the air entering the rod of aerosol-forming substrate in order to prevent temperature spikes that would combust or otherwise affect the aerosol-forming substrate [16].
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 move Felter’s first air ingress zone to the hollow tubular segment and direct air upstream to the rod of aerosol-forming substrate, because doing so would prevent temperature spikes that would combust or otherwise affect the aerosol-forming substrate.
Claim 31: Felter teaches the aerosol-generating system according to claim 15, wherein the aerosol-generating article (fig. 8 and [38-39], #15) further comprises a hollow tubular segment (annotated fig. 8) located downstream (arrows flow from leftmost end of 15 to rightmost end of 15) of the rod of aerosol-forming substrate (tobacco portion surrounded by 130).
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Felter does not explicitly teach that the first air ingress zone is located at a position along the hollow tubular segment.
Mironov teaches an aerosol-generating article (fig. 1 and [155], #100) comprising a rod of aerosol-forming substrate (104), and a filter (138) positioned downstream (arrows flow from leftmost end of 100 to rightmost end of 100) of the rod of aerosol-forming substrate (104), wherein the rod of aerosol-forming substrate (104) and the filter (138) are assembled within a wrapper (112),
the aerosol-generating article further comprising a first air ingress zone (132) located on the wrapper (112), the first air ingress zone (132) being configured to allow ingress of air into an interior of the aerosol-generating article (fig. 1 and [162-166], air flows from outside #100 through #132 into #100), wherein the first air ingress zone (132) is located along a hollow tubular segment (126 and 128), such that directing air upstream cools the air entering the rod of aerosol-forming substrate in order to prevent temperature spikes that would combust or otherwise affect the aerosol-forming substrate [16].
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 move Felter’s first air ingress zone to the hollow tubular segment and direct air upstream to the rod of aerosol-forming substrate, because doing so would prevent temperature spikes that would combust or otherwise affect the aerosol-forming substrate.
Response to Arguments
Applicant’s arguments of 2025 October 14 have been carefully considered. Upon further search and consideration necessitated by applicant’s amendments, a new ground of rejection is made for claims 15 and 18 over Felter.
Applicant’s arguments against Zuver (p. 8-12) are mooted by the new grounds of rejection which do not rely on Zuver.
Felter discloses a circumferential protrusion (fig. 8 and [38-39], protrusion of #140 adjacent to #132) configured to establish an airtight fit (vacuum) as in the above analysis.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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