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 .
Response to Amendment
Claims 7-10 are withdrawn. Claims 1-6 are presently examined.
Applicant’s arguments regarding the objection to the specification have been fully considered and are persuasive. The objection of 5/18/2026 is withdrawn.
Applicant’s arguments regarding the rejections under 35 USC 112(a) have been fully considered and are persuasive. The rejections of 5/18/2026 are overcome.
Claim Objections
Claim 2 is objected to because of the following informalities: The term “Test Kit” is capitalized despite not being a proper noun. Appropriate correction is required.
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 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over McLaughlin (US 2020/0113227) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3, McLaughlin discloses a non-combustible tobacco article for use in conjunction with a heat source having a mouth end filter portion that is covered with an overwrap (abstract). The mouth end filter portion is formed from two filter portions (figure 1, reference numerals 1, 3) that have a tobacco portion sitting between them ([0030], figure 1, reference numeral 2), which is considered to meet the claim limitation of a cavity segment. The filter portion located directly at the mouth end is considered to meet the claim limitation of a second filter segment, and the other filter portion is considered to meet the claim limitation of a first filter segment. The mouth end filter portion is intended as the location where aerosol exits the article towards the user [0030], indicating that it is intended to be held within a user’s mouth. The overwrap is made from one or more paper sheets that comprise the outer surface of the article ([0043], figure 1, reference numeral 4). The article is in the form of a rod (figure 1). The filter portions are made from cellulose acetate [0051]. McLaughlin does not explicitly disclose the overwrap being water resistant.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of McLaughlin from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, modified McLaughlin teaches all the claim limitations as set forth above. Modified McLaughlin does not explicitly teach the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified McLaughlin must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Regarding claim 4, McLaughlin discloses that the tobacco is provided in a granular format [0036].
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over McLaughlin (US 2020/0113227) in view of Bachmann (US 11,083,217) as applied to claim 4 above, and further in view of Lauterbach (US 4,893,638).
Regarding claim 5, modified McLaughlin teaches all the claim limitations as set forth above. McLaughlin additionally discloses that aerosol flows through the filter [0054]. Modified McLaughlin does not explicitly teach (a) a density or diameter of the granular tobacco and (b) the claimed particle diameter being obvious.
Regarding (a), Lauterbach teaches a cigarette (abstract) having a tobacco column consisting of ground tobacco with a particle size in the range of approximately 0.5 mm to 3.0 mm and a packing density of 350 mg/cm3 to 450 mg/cm3 (column 1, lines 48-50, column 2, lines 1-6). It is evident that smoke can flow through the tobacco column since a user could otherwise not inhale the smoke produced from combustion.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide granular tobacco of modified McLaughlin at the size and density of Lauterbach. One would have been motivated to do so since McLaughlin discloses that aerosol flows through the tobacco of the filter and Lauterbach teaches suitable tobacco particle sizes and densities that allow smoke flow through a tobacco portion.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over McLaughlin (US 2020/0113227) in view of Bachmann (US 11,083,217) as applied to claim 4 above, and further in view of Sato (US 3,856,025).
Regarding claim 6, modified McLaughlin teaches all the claim limitations as set forth above. Modified McLaughlin does not explicitly teach a filling density or resistance to draw.
Sato teaches a tobacco smoke filter (abstract) having good breathability and a high capacity to eliminate harmful substances (column 1, lines 46-50) having a porosity of 50 to 85 percent (column 1, lines 62-68, column 2, lines 1-13), equivalent to a packing density of the filter material of 15 to 50 percent, and resistance to draw of between 54 and 60 mm H2O (column 5, lines 26-39). The filter comprises mainly ethylene vinyl acetate copolymer (abstract). A smoker can inhale with little effort (column 1, lines 41-45).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filtration components of the filter of modified McLaughlin from the ethylene vinyl acetate copolymer of Sato, and to provide the granular tobacco of Sato at the same packing density. One would have been motivated to do so since Sato teaches a filter that has a high capacity to eliminate harmful substances while allowing a smoker to inhale with little effort.
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.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 17/927,305 (hereafter referred to as Kwon ‘305) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3, Kwon ‘305 claims a tobacco rod comprising a first filter segment, a second filter segment, and a cavity segment which is formed by the first filter segment and the second filter segment and filled with a tobacco material (claim 1). The second filter segment is upstream of the filter segment (claim 1). Kwon ‘305 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Kwon ‘305 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Kwon ‘305 claims all the claim limitations as set forth above. Kwon ‘305 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Kwon ‘305 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Regarding claim 4, Kwon ‘305 claims the cavity segment being filled with tobacco granules (claim 1).
Regarding claim 5, Kwon ‘305 claims the density of the tobacco granules being in a range of 0.5 g/cm3 to 1.2 g/cm3 (claim 4), and the diameter of the tobacco granules being in a range of 0.3 mm to 1.2 mm (claim 5).
Regarding claim 6, Kwon ‘305 claims the filling rate of the tobacco granules in the tobacco is about 80% or lower (claim 6).
Regarding claim 7, Kwon ‘305 claims that the resistance to draw of the first filter segment is in a range of 50 mm H2O/60 mm to 150 mm H2O/60 mm (claim 7).
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/001,182 (hereafter referred to as Kwon ‘182) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3-4, Kwon ‘182 claims a tobacco rod including a first filter segment and a second filter segment that together form a cavity segment (claim 5), indicating that the cavity segment is between the first and second filter segments. The filter segment is downstream of the cavity segment (claim 6), indicating that the second filter segment is upstream of it since the cavity segment is between the two filter segments. The cavity segment is filled with tobacco granules (claim 1). Kwon ‘182 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Kwon ‘182 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Kwon ‘182 claims all the claim limitations as set forth above. Kwon ‘182 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Kwon ‘182 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Regarding claim 5, Kwon ‘182 claims the density of the tobacco granules being in a range of 0.5 g/cm3 to 1.2 g/cm3 (claim 2), and a diameter of the tobacco granules being in a range of 0.3 mm to 1.2 mm (claim 3).
Regarding claim 6, Kwon ‘182 claims the filling rate of the tobacco granules in the cavity segment being 80% or lower (claim 1), and the first filter segment having a resistance to draw in a range of 50 mm H2O/60 mm to 150 mm H2O/60 mm (claim 6).
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/008,527 (hereafter referred to as Park ‘800) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3, Park ‘527 claims a tobacco rod including a first filter segment, a second filter segment, and a cavity formed by the first and second filter segments that is filled with tobacco granules (claim 2). Park ‘527 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Park ‘527 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Park ‘527 claims all the claim limitations as set forth above. Park ‘527 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Park ‘527 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Claims 1-3 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 of copending Application No. 18/008,800 (hereafter referred to as Park ‘800) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3, Park ‘800 claims a tobacco rod including a first filter segment, which is considered to meet the claim limitation of a second filter segment, a second filter segment, which is considered to meet the claim limitation of a first filter segment, and a cavity formed by the first and second filter segments that is filled with tobacco granules, and the first filter segment is located upstream of the second filter segment (claim 8). Park ‘800 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Park ‘800 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Park ‘800 claims all the claim limitations as set forth above. Park ‘800 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Park ‘800 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/008,811 (hereafter referred to as Park ‘811) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3, Park ‘811 claims a tobacco rod including a first filter segment, which is considered to meet the claim limitation of a second filter segment, a second filter segment, which is considered to meet the claim limitation of a first filter segment, and a cavity formed by the first and second filter segments that is filled with tobacco granules. The first filter segment is located upstream of the cavity element, indicating that the second filter segment is located downstream of the first filter segment (claim 1). Park ‘811 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Park ‘811 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Park ‘811 claims all the claim limitations as set forth above. Park ‘811 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Park ‘811 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/009,130 (hereafter referred to as Park ‘130) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3, Park ‘130 claims a tobacco rod including a first filter segment, a second filter segment, and a cavity formed by the first and second filter segments that is filled with tobacco granules (claim 2). It is evident that one of the filter segments must be downstream of the cavity and the other upstream of the cavity so that the cavity can be defined. The upstream segment is therefore considered to be the claimed second filter segment, and the downstream segment is therefore considered to be the claimed first filter segment. Park ‘130 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Park ‘130 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Park ‘130 claims all the claim limitations as set forth above. Park ‘130 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Park ‘130 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/009,153 (hereafter referred to as Park ‘153) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3, Park ‘153 claims a tobacco rod having first filter segment, a second filter segment that is located upstream of the first filter segment, and a cavity segment that is formed by the first filter segment and the second filter segment, wherein the cavity segment is filled with a tobacco granule (claim 1). Park ‘153 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Park ‘153 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Park ‘153 claims all the claim limitations as set forth above. Park ‘153 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Park ‘153 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Regarding claim 4, Park ‘153 claims the tobacco granule including tobacco fine particles (claim 1).
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/265,332 (hereafter referred to as Kwon ‘332) in view of Bachmann (US 11,083,217).
Regarding claims 1 and 3-4, Kwon ‘332 claims a tobacco rod comprising a first filter segment, a second filter segment, and a cavity segment formed by first filter segment and the second filter segment, wherein the cavity segment is filled with tobacco granules (claim 1). It is evident that one of the filter segments must be downstream of the cavity and the other upstream of the cavity so that the cavity can be defined. The upstream segment is therefore considered to be the claimed second filter segment, and the downstream segment is therefore considered to be the claimed first filter segment. Kwon ‘332 does not explicitly claim a grease resistant or water resistant paper material.
Bachmann teaches using paper as a filter material for cigarettes in place of cellulose acetate (column 1, lines 35-45) so that the filter degrades faster (column 1, lines 46-63). The paper is coated with a water repellant material (column 5, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter portions of Kwon ‘332 from the paper filter material of Bachmann. One would have been motivated to do so since Bachmann teaches a filter material that degrades more quickly.
Regarding claim 2, Kwon ‘332 claims all the claim limitations as set forth above. Kwon ‘332 does not explicitly claim the grease resistance of the paper being 5 or more according to a test kit.
However, one of ordinary skill in the art would recognize that filter paper of modified Kwon ‘332 must have similar properties to the claimed paper since they have similar structures. See MPEP § 2144.09 I.
Regarding claim 5, Kwon ‘332 claims a density of the tobacco granules being in a range of 0.5 g/cm3 to 1.2 g/cm3 and a diameter of the tobacco granules being in a range of 0.3 mm to 1.2 mm (claim 7).
Regarding claim 6, Kwon ‘332 claims a filling rate of the tobacco granules in the cavity segment being 80 volume % or lower and a resistance to draw of the first filter segment disposed downstream of the cavity segment being in a range of 50 mm H2O/60 mm to 150 mm H2O/60 mm (claim 7).
These are provisional nonstatutory double patenting rejections since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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