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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/31/25 has been entered.
Status of the Claims
Claims 16 and 18-32 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 12/31/25.
Claims 16, 18, and 28 are amended.
Claim 17 is cancelled.
Claim 32 is withdrawn.
Response to Arguments
Applicant’s arguments (filed 12/31/25, pages 6-8) with respect to the rejection(s) of amended Claim 16 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Borges (US 20160143355 A1).
Applicant's argument (filed 12/31/25, pages 8-9) with respect to the double patenting rejection(s) of Claim 16 as amended has been considered but is not persuasive. The Applicant argues that amended Claim 16 is substantially different from the claims of Application No. 17/905,734 (application allowed, Patent No. US 12,433,327 B2) and copending Application No. 17/905,738. The Examiner respectfully disagrees. While the claims at issue are not identical, they are not patentably distinct from each other. See the updated double patenting rejection below for further explanation. The double patenting rejections are maintained and modified where necessary based on Applicant’s amendments.
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.
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 16, 18-28, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Borges (US 20160143355 A1) in view of Stone (US 20120042885 A1).
Regarding Claim 16, Borges teaches an aerosol-generating article for producing an aerosol upon heating ([0001]) the aerosol-generating article comprising:
a rod of aerosol-forming substrate comprising an aerosol former (substrate 10; [0019]-[0020], [0243], Fig 1),
the aerosol-forming substrate having an aerosol former (the substrate may comprise an aerosol-forming compound such as glycerine or other known aerosol-formers. [0012], [0216]);
a filter positioned downstream of the rod of aerosol-forming substrate, the filter comprising: a mouthpiece segment comprising a plug of filtration material arranged downstream of the rod of aerosol-forming substrate (filtration material 32; [0224], [0249], Fig 1), and
a hollow tubular segment located between the mouthpiece segment and the rod of aerosol-forming substrate (hollow cellulose acetate tube 28; [0246], Fig 1),
wherein the rod of aerosol-forming substrate and the filter are assembled within a wrapper, the wrapper being formed of a sheet, wherein the mouthpiece segment and the hollow tubular segment are circumscribed by the sheet (outer wrapper 20; [0020], [0243], Fig 1), and
first and second air ingress zones located on the wrapper, the first and the second air ingress zones each being configured to allow the ingress of air into an interior of the aerosol-generating article ("cool air drawn through the one or more first air inlets around the periphery of the aerosol-forming substrate advantageously reduces the temperature of the aerosol-forming substrate" [0104]. First air inlets 40; [0255], Fig 1. The article may further comprise second and third air inlets to draw in cool air. [0112]-[0115]),
wherein the second air ingress zone is located at a position at least 1.5 mm downstream of the first air ingress zone (wherein one or more first air inlets are located at a position A-D and one or more third air inlets are located downstream of the substrate, such as at position E, the distance between the inlets may be between 6 and 10 mm. [0114], [0261], Table 1).
Borges does not explicitly disclose that the aerosol-forming substrate has an aerosol former content of greater than 10 percent on a dry weight basis. However, Stone discloses a rod of aerosol-forming substrate comprising an aerosol former, the aerosol-forming substrate having an aerosol former content of greater than 10 percent on a dry weight basis (The tobacco substrate may comprise 20% to 30% by a dry weight basis of glycerin. [0031]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the substrate of Borges with an aerosol former of greater than 10% on a dry weight basis as taught by Stone because Borges and Stone are both directed to aerosol generating articles, Borges is silent on the quantity of glycerin utilized, Stone teaches the use of greater than 10% on a dry weight basis of the aerosol former compound glycerin in the tobacco substrate of a smoking article, and this merely involves applying a known component quantity to a similar article to yield predictable results.
Regarding Claim 18, Borges teaches an aerosol-generating article wherein the filter further comprises an aerosol-cooling element located between the mouthpiece segment and the hollow tubular segment (aerosol-cooling element 14; [0243], Fig 1).
Regarding Claim 19, Borges teaches an aerosol-generating article wherein a width of the first air ingress zone is greater than or equal to a width of the second air ingress zone ("The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]. Wherein the shape and size of the first inlets may be adjusted, the first air inlets may be larger, smaller, or similar in size to the second and third air inlets; and thus, the width of the first inlets may be equal to or greater than the widths of the second and third air inlets).
Regarding Claims 20 and 21, Borges does not explicitly teach an aerosol-generating article wherein a width of the first air ingress zone is at least 3 mm and/or 5mm. However, Borges teaches that the number, size, and shape of the ingress zones affects the resistance to draw of the article ("The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]). Given that the size and location of the inlets directly effects the smoking performance of the article, a person having ordinary skill in the art would be motivated to perform routine optimization. A person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of the number, size, and shape of the inlets. See MPEP 2144.05(II). Moreover, it would be obvious to one having ordinary skill in the art that the width of the air ingress zone being at least 3 mm and/or 5mm is a matter of design choice and involves the scaling of known elements. See MPEP 2144.04(IV)(A). Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the smoking performance of the article through modification of the size, shape, and spacing of the inlets as disclosed in Borges, would arrive at the width of the air ingress zone of at least 3 mm and/or 5mm as claimed, absent evidence to the contrary.
Regarding Claims 22 and 24, Borges teaches an aerosol-generating article wherein the first and/or second air ingress zone comprises a porous portion of the wrapper (wherein a circumferential arrangement of first air inlets 40 is provided in wrapper 20, the inlet portion of the wrapper comprises a porous portion of the wrapper; and the section of the wrapper which comprises the inlets would be more porous than sections of the wrapper which do not comprise inlets. [0255], Fig 1.).
Regarding Claim 23, Borges teaches an aerosol-generating article wherein the second air ingress zone comprises a plurality of apertures extending through the wrapper ("the term ‘air inlet’ is used to describe a hole, slit, slot or other aperture through which air may be drawn into the smoking article" [0021]. "The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]).
Regarding Claims 25 and 26, Borges does not explicitly teach an aerosol-generating article wherein a width of the second air ingress zone is at least 3 mm and/or 5mm. However, Borges teaches that the number, size, and shape of the ingress zones affects the smoking performance of the article ("The number, shape, size and location of the first air inlets may be appropriately adjusted to achieve a good smoking performance" [0107]). Given that the size and location of the inlets effects the smoking performance of the article, a person having ordinary skill in the art would be motivated to perform routine optimization. A person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of the number, shape, and size of the air inlets. See MPEP 2144.05(II). Moreover, it would be obvious to one having ordinary skill in the art that the spacing of the air ingress zone being at least 3 mm and/or 5mm apart is a matter of design choice and involves the scaling of known elements. See MPEP 2144.04(IV)(A). Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the smoking performance of the article through modification of the size, shape, and spacing of the inlets as disclosed in Borges, would arrive at the width of the second air ingress zone of at least 3 mm and/or 5mm as claimed, absent evidence to the contrary.
Regarding Claim 27, Borges teaches an aerosol-generating article wherein the first and the second air ingress zones are located along the rod of aerosol-forming substrate (First air inlets 40 surround the substrate. [0255], Fig 1. The article may further comprise second air inlets to draw in cool air located downstream of the heat source. [0112]-[0113]).
Regarding Claim 28, Borges teaches an aerosol-generating article wherein the second air ingress zone is located along the hollow tubular segment (The article may further comprise third air inlets to draw in cool air positioned downstream of the substrate, such as around the hollow cellulose acetate tube at location E. [0114]-[0115], [0261], Fig 1).
Regarding Claim 31, Borges teaches an aerosol-generating article wherein the wrapper comprises an air-impermeable material (the wrapper may further comprise a heat-conducting portion which comprises a layer of a heat-conductive material such as a sheet metal. [0039]-[0043], [0253]).
Claims 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Borges and Stone as applied to Claims 16 and 22 above, and further in view of Matteau (US 6206008 B1).
Regarding Claims 29 and 30, Borges discloses an article wherein the porosity of the air ingress zones are adjusted to control smoking performance ([0107]), but does not explicitly disclose wherein the first air ingress zone has a porosity of at least 3000 Coresta Units and/or less than 25000 Coresta Units.
Matteau teaches an aerosol generating article which explicitly discloses that the filter has a porous section or is wrapped with porous foil/wrapper in the order of 10,000-30,000 Coresta units (Col. 5, Lines 53-54) which is interchangeable with the vent holes on the filter (ventilation holes 17; Col. 6, Lines 37-43). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. (See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the inlets of Borges with a porous wrapper which has a porosity of at least 3000 Coresta Units and/or less than 25000 Coresta Units as taught by Matteau because Borges and Matteau are both directed to radially ventilated aerosol generating articles, Matteau teaches that the permeability of the ventilation may be adjusted to achieved the desired flowrate (Col. 4, lines 65-67; col. 5 lines 1-2), and this merely involves applying a known ventilation component to a similarly ventilated article to yield predictable results.
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.
Claim 16 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over: (a) Claims 16, 19, and 24 of copending Application No. 17/905,734 (application allowed, Patent No. US 12,433,327 B2), and (b) Claims 16 and 19 of copending Application No. 17/905,738. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to an aerosol delivery device comprising 1) a rod of aerosol-forming substrate, 2) a downstream filter, 3) a wrapper, 4) first and second air ingress zones, and 5) a hollow tubular segment located between the mouthpiece segment and the rod of aerosol-forming substrate.
Rejection (a): The claims differ in that rejected Claim 16 recites a hollow tubular segment located between the mouthpiece segment and the rod of aerosol-forming substrate, wherein the second air ingress zone is located at a position at least 1.5 mm downstream of the first air ingress zone, and wherein the substrate comprises an aerosol former content of greater than 10 percent on a dry weight basis; whereas conflicting Claim 16 is silent on these elements. However, Claim 19 of copending Application No. 17/905,734 discloses a hollow tubular segment located between the mouthpiece segment and the rod of aerosol-forming substrate, Claim 24 of copending Application No. 17/905,734 discloses that the second air ingress zone is located at a position at least 2 mm downstream of the first air ingress zone, and the Specification of Application No. 17/905,734 discloses the substrate may comprise an aerosol former content of greater than about 10 percent on a dry weight basis ([0010]). Therefore, all the elements of rejected Claim 16 are present and obvious over the conflicting claims and application.
Rejection (b): The claims differ in that rejected Claim 16 recites wherein the second air ingress zone is located at a position at least 1.5 mm downstream of the first air ingress zone and wherein the substrate comprises an aerosol former content of greater than 10 percent on a dry weight basis; whereas conflicting Claim 16 is silent on both elements. However, Claim 19 of copending Application No. 17/905,738 discloses that the second air ingress zone is located at a position at least 2 mm downstream of the first air ingress zone, and the Specification of Application No. 17/905,738 discloses the substrate may comprise an aerosol former content of greater than about 10 percent on a dry weight basis ([0010]). Therefore, all the elements of rejected Claim 16 are present and obvious over the conflicting claims and application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755