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 13-23 are pending and are subject to this Office Action. Claim 13 is amended.
Response to Arguments
Applicant's arguments filed May 15, 2026, with respect to the rejection(s) of claims 13-23 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
On pg. 4-5, Applicant argues that the proposed modification is structurally inconsistent with the configuration of Wang because 1) the components of Wang are arranged in direct abutting relationship along the aerosol flow path, such that the cavities of the respective portions are aligned to form a continuous aerosol channel; and 2) introducing the transfer element of Bonnely would interrupt this continuous channel by inserting an additional component having its own geometry and flow characteristics. Examiner respectfully disagrees with the arguments because Wang states that the generated aerosol flows through the first cavity 21, the second cavity 31 and the third cavity 41 of the three tubes 2,3,4 in sequence before being inhaled by the user, which can effectively improve the smoke effect of the aerosol generating product. Introducing a space using the transfer element 12 of Bonnely directly downstream of the aerosol generating substrate 1 would not interrupt the three-tube configuration disclosed by Wang, and therefore, it is not necessarily true that the proposed modification is structurally inconsistent with the configuration of Wang. Further, the modification is motivated by the disclosure that the transfer element and its space serve to cool the aerosol generated from the aerosol generating article before reaching the user (Bonnely, [0242]).
On pg. 5-6, Applicant argues that even if the transfer element 12 of Bonnely includes an internal passage, the passage is confined within the element and does not constitute a space defined between distinct components as recited in the claims. Examiner respectfully disagrees with the arguments because the claims and specification do not specify that the space is peripherally unbounded. Specifically, Fig. 5 of the specification shows that the space 148 is bounded peripherally by wrapper 152 (see instant specification, pg 38, ln 25 – pg 39, ln 8). The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The term ‘space’ generally refers to an empty area or region as it would be understood by one of ordinary skill in the art. The hollow transfer element 12 necessarily forms a space in its bore, and Bonnely uses the terms transfer element and spacer element interchangeably (Bonnely, [0240]). Therefore, the argument is unpersuasive.
On. 7-9, Applicant argues that one would not have been motivated to perform the proposed modification of Wang in view of Yu because Wang teaches a configuration in which the second portion (which the Examiner equated to the second tube) has the largest internal diameter, which achieves an improved smoke effect, and the third portion (which the Examiner equated to the second tube first tube) has the smallest diameter, which improves heat insulation. It would not have been obvious to such a person to go against these teachings and modify Wang's cigarette so that the second portion has an internal diameter that is less than the first or third portions because doing so may result in a worsened smoke effect. Examiner respectfully disagrees with the arguments because while Wang provides motivations to retain its tube configurations, Wang states that the disclosed tube diameters are optional or preferable (Wang, [0018]-[0023], [0041]-[0044]). Turning to the configuration of Yu, Yu demonstrates that positioning a first tube at a mouth end of an aerosol generating article, wherein the first tube has a larger diameter than a second tube abutting the upstream end of the first tube, makes tar contamination on the end surface of mouthpiece less noticeable (Yu, [0008], [0011], [0050]). One of ordinary skill in the art would have been motivated by the disclosures of Yu to change the tube diameters to the claimed configuration, and this involves a change in size to another known size in the art. The change in size, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV A.
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.
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 13-23 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 110140999 A, English Translation) in view of Bonnely (US 2016/0192704 A1) and Yu (EP 3178333 A1, cited on the IDS dated 9/29/2022).
Regarding Claim 13, Wang, directed to aerosol generating article ([0012]), teaches an aerosol-generating article for producing an inhalable aerosol upon heating ([0011]-[0012], [0025], [0032], Fig. 1), the aerosol-generating article comprising:
a mouthpiece assembly comprising a first tube, a second tube, and a third tube ([0032]-[0034], Fig. 1; The aerosol generating article of Fig. 1 comprises a third part 4 (first tube), a second part 3 (second tube), and a first part 2 (third tube), which cooperate to form a mouthpiece assembly. Parts 2-4 are hollow tubes),
the mouthpiece assembly being located at a downstream end of the aerosol-generating article ([0032]-[0034], Fig. 1; Third part 4 (first tube), second part 3 (second tube), and first part 2 (third tube) are located at a downstream end of the aerosol-generating article); and
an aerosol-forming substrate ([0032]-[0034], Fig. 1; The aerosol generating article of Fig. 1 comprises aerosol generating substrate 1),
wherein the first tube abuts a downstream end face of the second tube, and the third tube abuts an upstream end face of the second tube ([0032]-[0034], Fig. 1; Third part 4 (first tube) abuts a downstream end face of second part 3 (second tube). First part 2 (third tube) abuts a upstream end face of second part 3 (second tube)),
wherein the first tube is located at a downstream end of the mouthpiece assembly ([0032]-[0034], Fig. 1; Third part 4 (first tube) is located at a downstream end of the mouthpiece assembly),
wherein the internal diameter of the first tube is between 3 mm and 8 mm ([0034], [0041]-[0042], Fig. 1; Third part 4 (first tube) comprises third cavity 41 having an internal diameter of 1.5 mm to 3 mm),
wherein a ratio of the internal diameter of the first tube to the internal diameter of the third tube is between 0.5 and 2 ([0034], [0041]-[0042], Fig. 1; Third part 4 (first tube) comprises third cavity 41 having an internal diameter of 1.5 mm to 3 mm. First part 2 (third tube) comprises first cavity 21 having an internal diameter of 2 mm to 4 mm. The ratio of ID(first tube):ID(third tube) is 0.375 to 1.5), and
wherein the second tube is a cellulose acetate tube ([0033], Fig. 1; Parts 2-4 are formed from cellulose acetate),
but does not teach the article i) wherein a space is defined between the third tube and the aerosol-forming substrate, wherein the space extends from the third tube to the aerosol-forming substrate, and ii) wherein an internal diameter of the second tube is smaller than an internal diameter of the first tube, wherein the internal diameter of the second tube is smaller than an internal diameter of the third tube, wherein a ratio of the internal diameter of the first tube to the internal diameter of the second tube is between 1.2 and 5.
With respect to i), Bonnely, directed to aerosol generating articles ([0001]-[0002]), teaches an aerosol generating article ([0259], Figs. 1-3; Smoking article 2 comprises an aerosol-forming substrate 10, a transfer element 12, an aerosol-cooling element 14, a spacer element 16 and a mouthpiece 18 in abutting coaxial alignment) comprising:
a mouthpiece assembly ([0259], Figs. 1-3; Smoking article 2 comprises an aerosol-forming substrate 10, a transfer element 12, an aerosol-cooling element 14, a spacer element 16 and a mouthpiece 18 in abutting coaxial alignment. [0239], [0247], Elements 14, 16, and 18 form a mouthpiece assembly because the aerosol-cooling element 14 and mouthpiece 18 may be formed from common filtration materials such as cellulose acetate),
the mouthpiece assembly being located at a downstream end of the aerosol-generating article ([0259], Figs. 1-3; Elements 14, 16, and 18 (mouthpiece assembly) is located at a downstream end of the heat not burn cigarette (aerosol-generating article)); and
an aerosol-forming substrate ([0259], Figs. 1-3; Smoking article 2 comprises an aerosol-forming substrate 10); and
a transfer element defining a space between the mouthpiece assembly and the aerosol-forming substrate ([0259], Figs. 1-3; Smoking article 2 comprises a transfer element 12 defining a cylindrical space between elements 14, 16, 18 (mouthpiece assembly) and aerosol-forming substrate 10).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the aerosol generating article of Wang comprising a transfer element defining a space between the mouthpiece assembly and the aerosol-forming substrate as taught by Bonnely because Wang and Bonnely are directed to aerosol generating articles, Bonnely demonstrates that the transfer element and the space serve to cool the aerosol generated from the aerosol generating article before reaching the user (Bonnely, [0242]), and this involves combining prior art elements according to known methods to yield predictable results. Further, because the mouthpiece assembly of Wang includes the third tube at its upstream end (Wang, [0032]-[0034], Fig. 1; First part 2, (third tube)), the space formed by the transfer element would necessarily be defined between the third tube and the aerosol-forming substrate as claimed.
Wang in view of Bonnely does not teach the article ii) wherein an internal diameter of the second tube is smaller than an internal diameter of the first tube, wherein the internal diameter of the second tube is smaller than an internal diameter of the third tube, wherein a ratio of the internal diameter of the first tube to the internal diameter of the second tube is between 1.2 and 5.
With respect to ii), Yu, directed to aerosol-generating articles ([0021]-[0022], [0054], Figs. 1 and 9; Cigarette 1 is an aerosol-generating article for producing smoke (an inhalable aerosol)), teaches an aerosol-generating article for producing an inhalable aerosol upon heating ([0021]-[0022], [0054], Figs. 1 and 9; Cigarette 1 is an aerosol-generating article for producing smoke (an inhalable aerosol) upon heating (burning). Fig. 9 shows an alternate embodiment (cigarette 1C) of cigarette 1 shown in Fig. 1. Cigarette 1/1C comprises tobacco rod 2, which is an aerosol-forming substrate which is known to one of ordinary skill in the art to produce an inhalable aerosol upon heating), the aerosol-generating article comprising:
a mouthpiece assembly comprising a first tube, a second tube, and a third tube ([0021]-[0022], [0054], Figs. 1 and 9; Cigarette 1/1C comprises filter 4/4C. Fig. 9 shows the filter 4C (mouthpiece assembly) of cigarette 1C comprising front section S2 (first tube), center hole section S4 (second tube) and center hole section S5 (third tube). [0024]-[0025], [0053]-[0054], Front section S2 (first tube), center hole section S4 (second tube) and center hole section S5 (third tube) are cylindrical bundles of a filtration material axially provided with penetration paths to define a plurality of tubes. Front section S2 (first tube) comprises first center hole 42a, center hole section S4 (second tube) comprises third center hole 45a, and center hole section S5 (third tube) comprises fourth center hole 46a); and
an aerosol-forming substrate ([0021]-[0022], [0054], Figs. 1 and 9; Cigarette 1/1C comprises tobacco rod 2. Tobacco is an aerosol-forming substrate which is known to one of ordinary skill in the art to produce an inhalable aerosol upon heating),
wherein the first tube abuts a downstream end face of the second tube ([0054], Fig. 9; Front section S2 (first tube) abuts a downstream end face of center hole section S4 (second tube)), and
the third tube abuts an upstream end face of the second tube ([0054], Fig. 9; Center hole section S5 (third tube) abuts an upstream end face of center hole section S4 (second tube)),
wherein an internal diameter of the second tube is smaller than an internal diameter of the first tube ([0054], Fig. 9; Center hole section S4 (second tube) is shown in Fig. 9 having an internal diameter that is smaller than an internal diameter of front section S2 (first tube)),
wherein the internal diameter of the second tube is smaller than an internal diameter of the third tube ([0054], Fig. 9; Center hole section S4 (second tube) is shown in Fig. 9 having an internal diameter that is smaller than an internal diameter of center hole section S5 (third tube)),
wherein the internal diameter of the first tube is between 3 mm and 8 mm ([0044], [0054], Fig. 9; Front section S2 (first tube) comprises first center hole 42a, having a diameter of 2 mm to 3 mm),
wherein the second tube has an internal diameter of between 1 mm and 3 mm ([0054], Fig. 9; Front section S2 (first tube) comprises first center hole 42a, having a diameter of 2 mm to 3 mm. Center hole section S4 (second tube) comprises a third center hole 45a. Fig. 9 shows that the diameter third center hole 45a is about one-third or one-half the diameter of first center hole 42a. Therefore, Yu reasonably suggests that the ID of front section S2 (first tube) may be about 1 mm – 1.5 mm),
wherein a ratio of the internal diameter of the first tube to the internal diameter of the second tube is between 1.2 and 5 ([0054], Fig. 9; Front section S2 (first tube) is shown in Fig. 9 having an internal diameter which is about twice as large as the internal diameter of center hole section S4 (second tube). Therefore, the ratio of the internal diameter of the first tube to the internal diameter of the second tube is about 2),
wherein a ratio of the internal diameter of the first tube to the internal diameter of the third tube is between 0.5 and 2 ([0054], Fig. 9; Front section S2 (first tube) is shown in Fig. 9 having an internal diameter which is slightly larger than the internal diameter of center hole section S5 (third tube). Therefore, the ratio of the internal diameter of the first tube to the internal diameter of the third tube is between 1 and 2), and
wherein a solid filter is located at an upstream end of the mouthpiece assembly ([0054], Fig. 9; Filtering section S1 is located upstream of filter 4C (mouthpiece assembly) comprising front section S2 (first tube), center hole section S4 (second tube) and center hole section S5 (third tube). [0024], In the filtering section S1, a filtration material 41 is provided such that a fiber bundle of cellulose acetate formed into a cylindrical shape is rolled by rolling paper).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article of Wang wherein an internal diameter of the second tube is smaller than an internal diameter of the first tube, wherein the internal diameter of the second tube is smaller than an internal diameter of the third tube, wherein a ratio of the internal diameter of the first tube to the internal diameter of the second tube is between 1.2 and 5, wherein the second tube has an internal diameter of between 1 mm and 3 mm, as taught by Yu because Wang and Yu are directed to aerosol-generating articles, Wang states that the disclosed tube diameters are optional or preferable (Wang, [0018]-[0023], [0041]-[0044]), Yu demonstrates that positioning a first tube at a mouth end of an aerosol generating article, wherein the first tube has a larger diameter than a second tube abutting the upstream end of the first tube, makes tar contamination on the end surface of mouthpiece less noticeable (Yu, [0008], [0011], [0050]), and this involves a change in size to another known size in the art. The change in size, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV A.
The ranges for the internal diameter of the first tube, the ratio of the internal diameter of the first tube to the internal diameter of the second tube, and the ratio of the internal diameter of the first tube to the internal diameter of the third tube disclosed by the prior art overlap the claimed ranges, and therefore the claimed ranges are considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 14, Wang in view of Bonnely and Yu teaches the aerosol-generating article according to claim 13. Wang further teaches the aerosol generating article wherein the internal diameter of the first tube is larger than the internal diameter of the third tube ([0034], [0041]-[0042], Fig. 1; Third part 4 (first tube) comprises third cavity 41 having an internal diameter of 1.5 mm to 3 mm. First part 2 (third tube) comprises first cavity 21 having an internal diameter of 2 mm to 4 mm. There must be embodiments wherein the internal diameter of the third part 4 (first tube)/third cavity 41 is larger than the internal diameter of the first part 2 (third tube)/first cavity 21).
Regarding Claim 15, Wang in view of Bonnely and Yu teaches the aerosol-generating article according to claim 13. Wang further teaches the aerosol generating article wherein the first tube is a cellulose acetate tube ([0033], Fig. 1; Parts 2-4 are formed from cellulose acetate).
Regarding Claim 16, Wang in view of Bonnely and Yu teaches the aerosol-generating article according to claim 13. Wang further teaches the aerosol generating article wherein the third tube is a cellulose acetate tube ([0033], Fig. 1; Parts 2-4 are formed from cellulose acetate).
Regarding Claim 17, Wang in view of Bonnely and Yu teaches the aerosol-generating article according to claim 13. Wang further teaches the aerosol generating article wherein a ratio of the internal diameter of the third tube to the internal diameter of the second tube is between 1.5 and 5 ([0034], [0041]-[0042], Fig. 1; First part 2 (third tube) comprises first cavity 21 having an internal diameter of 2 mm to 4 mm. Second part 3 (second tube) has been modified in view of Yu to have a diameter of 1-1.5mm. If the first part 2 (third tube) has an ID of 4 mm, and the second part 3 (second tube) has a diameter of 1 mm, wherein a ratio of the internal diameter of the third tube to the internal diameter of the second tube is 4). The range for the ratio of the internal diameter of the third tube to the internal diameter of the second tube disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claims 18-20, Wang in view of Bonnely and Yu teaches the aerosol-generating article according to claim 13. Wang further teaches the aerosol generating article wherein the first tube has an internal diameter of 4 mm, , and wherein the third tube has an internal diameter of between 3 mm and 8 mm ([0034], [0041]-[0042], Fig. 1; Third part 4 (first tube) comprises third cavity 41 having an internal diameter of 1.5 mm to 3 mm. First part 2 (third tube) comprises first cavity 21 having an internal diameter of 2 mm to 4 mm).
Yu further teaches the article wherein the second tube has an internal diameter of between 1 mm and 3 mm ([0054], Fig. 9; Front section S2 (first tube) comprises first center hole 42a, having a diameter of 2 mm to 3 mm. Center hole section S4 (second tube) comprises a third center hole 45a. Fig. 9 shows that the diameter third center hole 45a is about one-third or one-half the diameter of first center hole 42a. Therefore, Yu reasonably suggests that the ID of front section S2 (first tube) may be about 1 mm – 1.5 mm).
The range for the internal diameter of the second tube disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claims 21-23, Wang in view of Bonnely and Yu teaches the aerosol-generating article according to claim 13, but does not teach the article further comprising a ventilation zone, wherein the ventilation zone comprises one or more rows of ventilation perforations, wherein the one or more rows of ventilation perforations are formed through a wall of at least one of the first tube, the second tube, and the third tube.
Yu teaches an aerosol-generating article for producing an inhalable aerosol upon heating ([0021]-[0022], [0054], Figs. 1 and 9; Cigarette 1 is an aerosol-generating article for producing smoke (an inhalable aerosol) upon heating (burning). Fig. 9 shows an alternate embodiment (cigarette 1C) of cigarette 1 shown in Fig. 1. Cigarette 1/1C comprises tobacco rod 2, which is an aerosol-forming substrate which is known to one of ordinary skill in the art to produce an inhalable aerosol upon heating), the aerosol-generating article comprising:
a mouthpiece assembly comprising a first tube, a second tube, and a third tube ([0021]-[0022], [0054], Figs. 1 and 9; Cigarette 1/1C comprises filter 4/4C. Fig. 9 shows the filter 4C (mouthpiece assembly) of cigarette 1C comprising front section S2 (first tube), center hole section S4 (second tube) and center hole section S5 (third tube). [0024]-[0025], [0053]-[0054], Front section S2 (first tube), center hole section S4 (second tube) and center hole section S5 (third tube) are cylindrical bundles of a filtration material axially provided with penetration paths to define a plurality of tubes. Front section S2 (first tube) comprises first center hole 42a, center hole section S4 (second tube) comprises third center hole 45a, and center hole section S5 (third tube) comprises fourth center hole 46a);
the aerosol generating article further comprising a ventilation zone ([0030]-[0031], [0044], Figs. 2 and 6; Cigarette 1 may comprise a plurality of vent holes 31, which form a ventilation zone),
wherein the ventilation zone comprises one or more rows of ventilation perforations ([0030]-[0031], [0044], Figs. 2 and 6; Cigarette 1 may comprise a plurality of vent holes 31 provided as a single row of ventilation perforations through chip paper 3 and front section S2 (first tube)),
wherein the one or more rows of ventilation perforations are formed through a wall of at least one of the first tube, the second tube, and the third tube ([0030]-[0031], [0044], Figs. 2 and 6; Cigarette 1 may comprise a plurality of vent holes 31 provided as a single row of ventilation perforations through chip paper 3 and a wall of front section S2 (first tube)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the article of Wang in view of Bonnely and Yu further comprising a ventilation zone, wherein the ventilation zone comprises one or more rows of ventilation perforations, wherein the one or more rows of ventilation perforations are formed through a wall of at least one of the first tube, the second tube, and the third tube as taught by Yu because Wang and Yu are directed to aerosol-generating articles, and Yu demonstrates that the ventilation perforations allow external air to be introduced to the article which mixes with the mainstream smoke to cause dilution of components of the mainstream smoke and reduce tar, nicotine, CO, or the like contained in the mainstream smoke (Yu, [0030]-[0031], [0044]).
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.
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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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