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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 19 has been entered.
Claims 1-4, 6-10, and 12 are pending.
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.
Claims 1-2, 4, and 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Jeoung (WO 2020032610 A1 with reference made to machine translation) in view of Deforel (US 2019328031 A1) as evidenced by “Menthol”.
Claim 1: Jeoung teaches an aerosol-generating article (fig. 5 and [63-64], #5) comprising: an aerosol-forming substrate part (510);
a cooling part (521) disposed downstream ([64], #510 and #521 are connected at the downstream end of #510, so #521 is downstream of #510) of the aerosol-forming substrate part (510) and configured to cool an aerosol formed in the aerosol-forming substrate part [64];
and a first filter part (522) disposed between ([65], the order of parts from upstream to downstream is #510 to #522 to #521 to #523) the aerosol-forming substrate part (510) and the cooling part (521), the first filter part (522) being configured to filter the aerosol formed in the aerosol-forming substrate part (510),
wherein the cooling part (521) is a tubular structure having a hollow formed therein ([84], cooling unit #521 can be embodied in a sheet shape; [98], fig. 7A-B show such a sheet-shaped cooling unit; fig. 7a, the sheet-shaped cooling unit #700 surrounds a hollow),
wherein a sheet-type material (710 which is rolled into 720) is disposed on an inner wall (fig. 7 shows #700 and #720 abutting; [109-110], #720 can be positioned in various patterns which requires that #720 are fixed in relative position in order to form patterns which requires that #720 is disposed on an inner wall of the hollow of #700) of the cooling part (700), and the sheet-type material (710) includes a polysaccharide material ([100-101], cellulose-based materials) and a first flavoring that is sucrose [78].
Jeoung does not explicitly teach a flavoring having a melting point of 80 °C or lower.
Deforel teaches an aerosol-generating article comprising a sheet-type material [1] which can comprise a first flavoring that improves malleability of the sheet-type material [90], exemplified as sucrose [92], and a second flavoring that imparts a soothing chemesthetic sensation to a user [161-162], exemplified as menthol [163].
Menthol has a melting point of about 40 °C (“Menthol”).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Deforel’s menthol to Jeoung’s sheet-type material comprising sucrose, because doing so would impart a soothing chemesthetic sensation to a user.
Claim 2: modified Jeoung teaches the aerosol-generating article of claim 1, wherein the sheet-type material (fig. 7a, #710) is folded in a longitudinal direction (fig. 7a).
“Folded” is interpreted to include the meaning of “bent or curved”.
Claim 4: Jeoung teaches the aerosol-generating article of claim 1, further comprising: a first second part (fig. 5, #523) which is disposed downstream ([65], the order of parts from upstream to downstream is #510 to #522 to #521 to #523) of the cooling part (521) and in which a hollow is not formed, wherein the first filter part (522) has a hollow formed therein.
Claim 6: modified Jeoung teaches the aerosol-generating article of claim 1, further comprising: a second filter part (fig. 5, #523) which is disposed downstream ([65], the order of parts from upstream to downstream is #510 to #522 to #521 to #523) of the cooling part (521).
Jeoung does not explicitly teach that the second filter part has a hollow formed therein.
Jeoung teaches a filter part ([75-77], #522) having a hollow formed therein, such that a cooling effect can be generated along the filter part [77].
Jeoung’s second filter part is at a downstream end of the device [65] closest to a user. One of ordinary skill looking to optimize all aspects of Jeoung would consider cooling air before deliver to a user to yield expectation to succeed.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Jeoung’s first filter part hollow to Jeoung’s second filter part, because doing so would generate a cooling effect before delivery to a user.
Claim 7: Jeoung teaches the aerosol-generating article of claim 1, wherein the polysaccharide material ([100-101], cellulose-based materials) is a cellulose-based material.
Claims 8-9: modified Jeoung teaches the aerosol-generating article of claim 1.
Modified Jeoung does not explicitly teach that the sheet-type material includes: 20 to 60 parts by weight of the polysaccharide material; 10 to 50 parts by weight of the flavoring; and 1 to 10 parts by weight of a plasticizer.
Deforel teaches an aerosol-generating article (fig. 1) comprising a sheet-type material ([224], crimped and gathered sheet) formed on an inner wall (wrapper), wherein the sheet-type material includes: 30 to 60 parts by weight of polysaccharide material ([81 and 83], cellulosic material); 15 to 45 parts by weight of flavoring ([118 and 120], total sugar content); and 5 to 35 parts by weight of plasticizer ([141 and 144], aerosol former; [140], triethylene glycol, 1,3-butanediol, and glycerin are well-known plasticizers), such that the sheet-type material generates aerosol at achievable temperatures [12] and such that the plasticizer facilitates formation of aerosol upon heating [136].
Deforel’s plasticizer range overlaps with the claimed range. The courts have held that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The courts have held that prior art teaching carbon monoxide concentrations of “about 1-5%” renders obvious a claim reciting carbon monoxide concentrations of “more than 5%.” In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). The courts have held that prior art renders obvious a claim reciting an overlapping endpoint, particularly when there is no showing of criticality of the claimed range.
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 make Jeoung’s sheet-type material include: 30 to 60 parts by weight of the polysaccharide material; 15 to 45 parts by weight of the flavoring; and 5 to 35 parts by weight of a plasticizer, which overlaps with 1 to 10 parts by weight, because doing so would enable the sheet-type material to generate aerosol at achievable temperatures and would enable the plasticizer to facilitate formation of aerosol upon heating.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jeoung (WO 2020032610 A1 with reference made to machine translation) in view of Deforel (US 2019328031 A1) as evidenced by “Menthol” as applied to claim 1 in further view of Zuber (US 20140305448 A1).
Claim 2: Jeoung teaches the aerosol-generating article of claim 1. If applicant disagrees with the above interpretation of “folded” then the following modification renders obvious claim 2.
Zuber teaches an aerosol-generating article (fig. 1, #10) comprising an aerosol-forming part (20) and a cooling part (40) downstream (#50 marks the mouth end) of the aerosol-forming part (20) and configured to cool an aerosol [182], wherein a sheet-type material ([132], sheet material) formed on an inner wall (wrapper) of the cooling part (aerosol-cooling element) is pleated in a longitudinal direction [118], such that multiple channels are formed [117] along which air can flow through the cooling part in a uniform manner [118].
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 pleat Jeoung’s sheet-type material in a longitudinal direction as taught by Zuber, because doing so would form multiple channels along which air can flow through the cooling part in a uniform manner.
Claims 3, 10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Jeoung (WO 2020032610 A1) in view of Deforel (US 2019328031 A1) as evidenced by “Menthol” as applied to claim 1 in further view of Uthurry (WO 2020128043 A1).
Claim 3: modified Jeoung teaches the aerosol-generating article of claim 1.
Modified Jeoung does not explicitly teach that resistance to draw of the cooling part is in a range of 0.1 mmH2O/mm to 1.5 mmH2O/mm.
Uthurry teaches an aerosol-generating article (fig. 1, #10) comprising an aerosol-forming part (12), a cooling part (16) downstream (#24 marks the upstream end) of the aerosol-forming part (12) and configured to cool an aerosol (p. 6, lines 4-10), wherein resistance to draw of the cooling part (16) is in a range of 0 mmH2O to 10 mmH2O (p. 19, lines 19-21), such that the cooling part only marginally contributes to overall RTD (lines 14-17) in order to enable fine-tuning of the overall RTD (p. 7, lines 3-9).
Uthurry’s range overlaps with the claimed range. The courts have held that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). The courts have held that prior art teaching a layer “not less than about 10 nm [i.e., 100 Angstroms]” renders obvious a claim reciting a layer between “50 to 100 Angstroms”. In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). The courts have held that prior art renders obvious a claim reciting an overlapping endpoint, particularly when there is no showing of criticality of the claimed range.
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 Jeoung’s cooling part such that a resistance to draw of the cooling part is in Uthurry’s range of 0 mmH2O/mm to 10 mmH2O/mm, which overlaps with 0.1 mmH2O/mm to 1.5 mmH2O/mm, because doing so would minimize the cooling part’s RTD in order to enable fine tuning of the overall device’s RTD.
Claim 10: modified Jeoung teaches the aerosol-generating article of claim 1.
Modified Jeoung does not explicitly teach that a thickness of the sheet-type material is in a range of 0.2 mm to 1.5 mm.
Uthurry teaches an aerosol-generating article (fig. 1, #10) comprising an aerosol-forming part (12), a cooling part (16) downstream (#24 marks the upstream end) of the aerosol-forming part (12) and configured to cool an aerosol (p. 6, lines 4-10), wherein a thickness of a sheet-type material of the cooling part (16) is 1.5 mm or less (p. 6, lines 13-14), such that the surface area of the cooling part can be maximized (lines 13-17) in order to mitigate diffusion of ventilation air prior to contact with aerosol (lines 23-25) and to better control cooling of aerosol (lines 26-28).
Uthurry’s range overlaps with the claimed range. The courts have held that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). The courts have held that prior art teaching a layer “not less than about 10 nm [i.e., 100 Angstroms]” renders obvious a claim reciting a layer between “50 to 100 Angstroms”. In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). The courts have held that prior art renders obvious a claim reciting an overlapping endpoint, particularly when there is no showing of criticality of the claimed range.
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 Jeoung’s sheet-type material such that a thickness of the sheet-type material is Uthurry’s 1.5 mm or less, which overlaps with 0.2 mm to 1.5 mm, because doing so would enable the surface area of the cooling part to be maximized in order to mitigate diffusion of ventilation air prior to contact with aerosol and to enable improved control of aerosol cooling.
Claim 12: Jeoung teaches the aerosol-generating article of claim 1.
Jeoung does not explicitly teach that a plurality of holes are formed in the sheet-type material.
Uthurry teaches an aerosol-generating article (fig. 1, #10) comprising an aerosol-forming part (12), a cooling part (16) downstream (#24 marks the upstream end) of the aerosol-forming part (12) and configured to cool an aerosol (p. 6, lines 4-10), wherein a plurality of holes (26) are formed in a sheet-type material of the cooling part (16), such that the plurality of holes facilitate improved nucleation of aerosol particles (p. 21, line 32 – p. 22, line 6) for delivery to a user.
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 add Uthurry’s holes to Jeoung’s sheet-type material, because doing so would enable improve nucleation of aerosol particles for delivery to a user.
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,063,963 in view of Jeoung (WO 2020032610 A1) and Deforel (US 2019328031 A1) as evidenced by “Menthol”.
Claim 1: ‘963 recites an aerosol-generating article (C1) comprising: an aerosol-forming substrate part (tobacco rod);
and a cooling part (cooling segment) disposed downstream of the aerosol-forming substrate part (tobacco rod) and configured to cool an aerosol formed in the aerosol-forming substrate part, wherein the cooling part (cooling segment) is a tubular segment having a hollow formed therein (C3, a reconstituted tobacco sheet is formed within the cooling segment which requires some kind of hollow structure), wherein a sheet-type material (C2, reconstituted tobacco sheet) is disposed on an inner wall of the hollow inside the cooling part (the sheet is formed within the cooling segment).
‘963 does not recite a first filter part disposed between the aerosol-forming substrate part and the cooling part, the first filter part being configured to filter the aerosol formed in the aerosol-forming substrate part,
or that the sheet-type material includes a polysaccharide material and a flavoring having a melting point of 80 °C or lower.
Jeoung teaches an aerosol-generating article (fig. 7a and [100-101]) comprising a first filter part ([65], #522) disposed between ([65], the order of parts from upstream to downstream is #510 to #522 to #521 to #523) an aerosol-forming substrate part (510) and a cooling part (521), the first filter part (521) being configured to filter the aerosol formed in the aerosol-forming substrate part (510), such that the first filter part can filter and cool the aerosol-generating article [75-77].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Jeoung’s first filter part configured to filter aerosol formed in the aerosol-forming substrate part between between the aerosol-forming substrate part and the cooling part, because doing so would enable the first filter part to filter and cool the aerosol-generating article.
Jeoung further teaches a sheet-type material (710) which includes a polysaccharide material ([100], cellulose-based materials) and a flavoring ([101], sucrose; [72], sucrose is a flavoring), such that sheet-type material is resilient [100] and inhibits precipitation of sugar crystals [101].
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 arrange ‘963’s sheet-type material on an inner wall of the hollow, and to make ‘963’s sheet-type material include a polysaccharide material and a flavoring, because doing so would make the sheet-type material resilient and would inhibit precipitation of sugar crystals.
Deforel teaches an aerosol-generating article comprising a sheet-type material [1] which can comprise a first flavoring that improves malleability of the sheet-type material [90], exemplified as sucrose [92], and a second flavoring that imparts a soothing chemesthetic sensation to a user [161-162], exemplified as menthol [163].
Menthol has a melting point of about 40 °C (“Menthol”).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Deforel’s menthol to modified ‘963’s sheet-type material comprising sucrose, because doing so would impart a soothing chemesthetic sensation to a user.
Claim 2: modified ‘963 recites the aerosol-generating article of claim 1, wherein the sheet-type material (C3, the reconstituted tobacco sheet) is folded (rolled up) in a longitudinal direction.
Claims 1-3, 6, 8-9, and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7, and 9-10 of copending Application No. 17/928790 (reference application) in view of Deforel (US 2019328031 A1).
Claim 1: ‘790 recites an aerosol-generating article (C1) comprising: an aerosol-forming substrate part;
and a cooling part disposed downstream of the aerosol-forming substrate part and configured to cool an aerosol formed in the aerosol-forming substrate part;
wherein the cooling part is a tubular structure having a hollow formed therein (a sheet-type material is disposed in the cooling part which requires some kind of tubular, hollow structure), wherein a sheet-type material is disposed on an inner wall of the hollow inside the cooling part (the sheet is formed within the cooling segment), and the sheet-type material includes a polysaccharide material and a flavoring.
‘790 does not recite that the flavoring has a melting point of 80 °C or lower.
Deforel teaches an aerosol-generating article comprising a sheet-type material [1] which can comprise a first flavoring that improves malleability of the sheet-type material [90], exemplified as sucrose [92], and a second flavoring that imparts a soothing chemesthetic sensation to a user [161-162], exemplified as menthol [163].
Menthol has a melting point of about 40 °C (“Menthol”).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Deforel’s menthol to ‘790’s sheet-type material comprising a flavoring, because doing so would impart a soothing chemesthetic sensation to a user.
Claim 2: modified ‘790 recites the aerosol-generating article of claim 1, (C2) wherein the sheet-type material is pleated or folded in a longitudinal direction.
Claim 3: modified ‘790 recites the aerosol-generating article of claim 1, wherein (C5) resistance to draw of the cooling part is in a range of 0.1 mmH2O/mm to 3.5 mmH2O/mm, which overlaps with 0.1 mmH2O/mm to 1.5 mmH2O/mm.
‘790’s range overlaps with the claimed range. The courts have held that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The courts have held that prior art teaching carbon monoxide concentrations of “about 1-5%” renders obvious a claim reciting carbon monoxide concentrations of “more than 5%.” In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). The courts have held that prior art renders obvious a claim reciting an overlapping endpoint, particularly when there is no showing of criticality of the claimed range.
Claim 6: modified ‘790 recites the aerosol-generating article of claim 1, (C7) further comprising: a first filter part which is disposed downstream of the cooling part and has a hollow formed therein; and a second filter part which is disposed between the cooling part and the first filter part and in which a hollow is not formed.
Claim 8: modified ‘790 recites the aerosol-generating article of claim 1, (C9) wherein the sheet-type material includes: 20 to 60 parts by weight of the polysaccharide material; and 20 to 50 parts by weight of the flavoring, which overlaps with 10 to 50 parts by weight of the flavoring.
‘790’s range overlaps with the claimed range. The courts have held that a prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The courts have held that prior art teaching carbon monoxide concentrations of “about 1-5%” renders obvious a claim reciting carbon monoxide concentrations of “more than 5%.” In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). The courts have held that prior art renders obvious a claim reciting an overlapping endpoint, particularly when there is no showing of criticality of the claimed range.
Claim 9: modified ‘790 recites the aerosol-generating article of claim 8, (C10) wherein the sheet-type material further includes 1 to 10 parts by weight of a plasticizer.
Claim 12: modified ‘790 recites the aerosol-generating article of claim 1, (C1) wherein a plurality of holes are formed in the sheet-type material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments of 2025 October 20 have been carefully considered. Upon further search and consideration necessitated by applicant's amendments, a new ground of rejection is made over Jeoung in view of Deforel.
Applicant’s arguments (p. 2, [final paragraph] – p. 3, [1]) against Mishra are rendered moot by the new ground of rejection.
Double Patenting over ‘963: upon further search and consideration, a new ground of double patenting rejection is made over ‘963 in view of Jeoung and Deforel.
Double Patenting over ‘790: a complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321. See MPEP 804(I)(B)(1).
Applicant has neither shown patentable distinctness nor filed a terminal disclaimer, so the above double patenting rejection is maintained.
Conclusion
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747