CTFR 17/928,549 CTFR 99593 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 Submission Applicant’s submission filed on 2026 May 12 has been entered. Claims 1-4, 6, 8-10, and 12-14 are pending. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-2, 4, 6, 8-9, and 14 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 #720 disposed on an inner wall 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], wherein the polysaccharide material ([100-101], cellulose-based material) is a sheet-forming substance for forming a sheet (the cellulose-based material forms a sheet), wherein the polysaccharide material (cellulose-based material) is a cellulosed-based material, wherein the polysaccharide material (cellulose-based material) is configured to cover and fix (the cellulose-based material touches and secures in place the applied sucrose) the first flavoring (sucrose). 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 to yield expectation to succeed in applying the same air-cooling benefit. 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. 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. Claim 14: modified Jeoung teaches the aerosol-generating article of claim 1, wherein the first filter part (fig. 5 and [63], #522) has a hollow formed therein [75], and wherein an inner diameter ratio of the first filter part (522) to the cooling part (521) is in a range of about 1:1.1 to 1:4.5 ([70], the cigarette has a diameter between 5mm-9mm, so the cooling part (fig. 7a, #700) has a diameter between about 5mm-9mm; [75], the first filter part #522 has a diameter between 2mm-4.5mm; first filter part diameter : cooling part diameter ratio = between 1 : (9mm/2mm) = 1 : 4.5 and 1 : (5mm/4.5mm) = 1 : 1.1). Jeoung’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 instant invention to dimension Jeoung’s first filter part inner diameter and cooling part inner diameter to between about 1:1 and 1:3.5, because doing so is taught by overlapping ranges . 07-21-aia AIA Claim 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 . 07-21-aia AIA Claim s 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 . 07-21-aia AIA Claim 13 is 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 Lavanchy (WO 2020115147 A1) . Claim 13: modified Jeoung teaches the aerosol-generating article of claim 1, wherein the first filter part (fig. 5 and [63], #522) has a hollow formed therein [75], and wherein an average cross-sectional area of the hollow of the cooling part (521) is greater than an average cross-sectional area of the hollow of the first filter part (521) by a factor of between about 1.23 and 20.25 ([70], the cigarette has a diameter between 5mm-9mm, so the cooling part (fig. 7a, #700) has a diameter between about 5mm-9mm; [75], the first filter part #522 has a diameter between 2mm-4.5mm; cooling part hollow area / first filter part hollow area = ((cooling part hollow radius)/(first filter part hollow radius)) 2 = between (5mm/4.5mm) 2 = 1.23 and (9mm/2mm) 2 = 20.25). Jeoung’s range overlaps with the claimed value. 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. Lavanchy teaches an aerosol-generating article (fig. 1 and p. 11, lines 12-20) comprising a first filter part (14) and a cooling part (40), wherein a cross-sectional area of the cooling part is greater than a cross-sectional area of the first filter part by a factor between 1.44 and 6.25 (p. 6, lines 19-28, the cooling venturi part has an innermost diameter between 1mm-3mm larger than the first filter part; p. 3, lines 13-14, the first filter part has an inner diameter between 2mm-5mm; cooling part hollow area / first filter part hollow area = ((cooling part hollow radius)/(first filter part hollow radius)) 2 = between (5mm+1mm/5mm) 2 = 1.44 and (2mm+3mm/2mm) 2 = 6.25), wherein the inner diameter of the first filter part is a result-effective variable that control a resistance-to-draw of the aerosol-generating article (p. 2, line 10, inner diameter controls resistance-to-draw; p. 3, lines 21-22 the first filter part can adjust a resistance-to-draw). 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 dimension Jeoung’s cooling part hollow area as larger than the first filter part hollow area by a factor of about 1.5, because doing so is taught by Jeoung’s overlapping ranges and would further be routine optimization of Jeoung’s dimensions in order to yield a desired resistance-to-draw, as taught by Lavanchy. Response to Arguments Applicant’s arguments of 2026 May 12 have been carefully considered but are not persuasive. Applicant argues (p. 8) that Jeoung teaches a flavoring (sucrose) applied onto a sheet-type material (paper), while Deforel does not specify whether a flavoring is incorporated into a sheet-type material or applied onto a sheet-type material. However, Jeoung’s sucrose applied onto a porous paper sheet [Jeoung 100-101] would mix sucrose and paper together, much like Deforel’s sheet comprising sugar [Deforel 90]. That Jeoung discloses a specific method of applying sugar onto a sheet, while Deforel discloses a sheet and sugar with unspecified application method, does not break the pertinence of Deforel’s structure (sheet and sugar) onto Jeoung’s structure (sheet and sugar). Applicant argues (p. 9, “Completely different components…”) that Jeoung is directed to a cooling sheet for cooling an aerosol, while Deforel is directed to a nicotine sheet in an aerosol-generating rod. However, Jeoung’s cooling sheet (fig. 7a and [98-100], #710) is in an aerosol-generating rod (fig. 5), so Jeoung and Deforel pertain to the same elements of a sheet in an aerosol-generating rod. Applicant reiterates (p. 9, “Completely different positions…”) that Jeoung teaches a flavoring (sucrose) applied onto a sheet-type material (paper), while Deforel teaches a flavoring incorporated into a sheet-type material. However, Jeoung’s sucrose applied onto a porous paper sheet [Jeoung 100-101] would mix sucrose and paper together, much like Deforel’s sheet comprising sugar [Deforel 90]. In particular, applicant argues that “if the saccharide applied on the sheet surface in Jeoung were relocated into the sheet composition as in Deforel, the efficiency of the aerosol-cooling effect in Jeoung would be deteriorated”. However, the examiner’s proposed modification adds Deforel’s chemesthetic menthol to Jeoung and does not reposition Jeoung’s sucrose. Applicant argues (p. 10, “Limitation 2…”) limitations which are not claimed, e.g., the flavoring agent is encapsulated within the saccharide. However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns , 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Amended claim 1 recites a sheet-type material that includes a flavoring, and Deforel teaches a sheet-type material that comprises a menthol flavoring for the benefit of a cooling chemesthetic effect [Deforel 162] to arrive at amended claim 1. Conclusion 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 ET. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TOBEY C LE/Examiner, Art Unit 1747 /Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747 Application/Control Number: 17/928,549 Page 2 Art Unit: 1747 Application/Control Number: 17/928,549 Page 3 Art Unit: 1747 Application/Control Number: 17/928,549 Page 4 Art Unit: 1747 Application/Control Number: 17/928,549 Page 5 Art Unit: 1747 Application/Control Number: 17/928,549 Page 6 Art Unit: 1747 Application/Control Number: 17/928,549 Page 7 Art Unit: 1747 Application/Control Number: 17/928,549 Page 8 Art Unit: 1747 Application/Control Number: 17/928,549 Page 9 Art Unit: 1747 Application/Control Number: 17/928,549 Page 10 Art Unit: 1747 Application/Control Number: 17/928,549 Page 11 Art Unit: 1747 Application/Control Number: 17/928,549 Page 12 Art Unit: 1747 Application/Control Number: 17/928,549 Page 13 Art Unit: 1747 Application/Control Number: 17/928,549 Page 14 Art Unit: 1747 Application/Control Number: 17/928,549 Page 15 Art Unit: 1747
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