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 1-9, and 11-32 are pending and are subject to this Office Action. Claims 30-32 are new. Claim 10 is cancelled.
Response to Amendments
The amendments to the claims filed on July 15, 2026 are acknowledged.
Response to Arguments
Applicant's arguments filed July 15, 2026 have been fully considered but they are not persuasive.
On pgs 7-8, Applicant argues that Examiner is incorrect to state that, based on Irby, a person of ordinary skill in the art would be motivated to increase the hardness of Andresen's particles to improve capsule rupture, because Irby provides no such technical teaching. Specifically, Applicant argues that the quotation on Irby, column 4, lines 25-29: “The stiffness of the paper facilitates rupturing of the microcapsules when the filter element of the invention is squeezed, and we have further found that the presence of the carbon particles contributes to the completeness with which the microcapsules are ruptured by compression of the filler material” only supports stiffening the paper – not increasing the hardness of the particles. Applicant further argues that the combination is based on hindsight reasoning. Examiner respectfully disagrees with the argument because the cited quotation explicitly states that “the presence of the carbon particles contributes to the completeness with which the microcapsules are ruptured.” While the paper is directly compressed by the user’s fingers, one of ordinary skill in the art would recognize that the hardness and abrasiveness of the carbon particle surfaces additionally contribute to the rupturing of the microcapsules. Further, one of ordinary skill in the art would recognize that increasing the hardness of the particles would increase the degree to which the microcapsules are ruptured by compression, regardless of a direct citation.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, “it would have been obvious to provide the component of Andresen wherein the particles are configured such that, in use, the particles promote breaking of the aerosol-modifying agent capsules upon the application of an external force to the aerosol provision system component by a user as taught by Irby because Andresen and Irby are directed to filters, Irby demonstrates that when a user applies an external force to the outer surface of the component to rupture the capsules, presence of the particles contributes to the completeness with which the capsules are ruptured by compression (Irby, col 2, ln 62 – col 3, ln 4, col 4, ln 25-29, Figs. 1, 3), and this involves combining prior art elements according to known methods to yield predictable results. Therefore, the arguments are found unpersuasive.
On pg. 9-10, Applicant argues that one of ordinary skill in the art would not have been motivated to replacing all or a portion of the particles of Andresen with Kido's cellulose acetate particles because the fact that the references generally concern cigarette filters does not, by itself, provide a reason to substitute particulate materials having different disclosed functions. Specifically, Andresen identifies activated carbon and charcoal as representative particulate adsorbent materials and explains that those materials are provided to alter the mainstream smoke passing through the filter, while Kido disperses cellulose acetate particles within a cellulose acetate fiber tow to control airflow resistance and to improve filtration through cooperation between the particles and the tow. Examiner respectfully disagrees with the arguments because, as stated on the Non-Final Rejection dated 4/15/2026, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace all or a portion of the particles taught by Andresen in view of Irby with the cellulose acetate particles as taught by Kido because Andresen, Irby, and Kido are directed to filters, Andresen states that the list of sorbent particles is non limiting (Andresen, [0030]), Kido teaches that by adding cellulose acetate particles to a filter material significantly enhances the selective filtration capacity of the filter (Kido, pg 14, ln 13-16), and this involves replacing one material or for another to yield predictable results. Therefore, while adsorptive carbon particles and cellulose acetate particles may have differing mechanisms of filtration, both the carbon particles of Andresen and the CA particles of Kido work to increase the selective filtration of various aerosol components. Further, as Kido states that that adsorbents such as activated carbon can be added to the CA particles beforehand (Kido, pg 6, ln 7-9), one of ordinary skill would have been motivated to replacing a portion of the particles of Andresen with Kido's cellulose acetate particles to provide both types of particles in the filter. Therefore, the proposed modification would not render the prior art invention being modified (Andresen) unsatisfactory for its intended purpose of filtering out unwanted smoke/aerosol components.
On pg. 10-11, Applicant respectfully disagrees with the argument that it would have been obvious to a person of ordinary skill to modify the combined teachings of Andresen, Irby, and Kido by adding plasticizer to the cellulose acetate particles and submits that Sampson is silent regarding the addition of plasticizer to particles. Examiner respectfully disagrees with the arguments because, as described above, Irby provides a clear demonstration that that the particles must have a sufficient hardness to rupture the shell of the capsules (Irby, col 4, ln 25-29), and Sampson further demonstrates that the hardness of cellulose acetate can be increased by the addition of a plasticizer (Sampson, [0004]-[0005]). While Sampson does not explicitly disclose the addition of plasticizer to cellulose acetate particles, one of ordinary skill in the art would have been motivated to increase the hardness of the CA particles based on the disclosures in Irby, col 4, ln 25-29). One of ordinary skill in the art would have been motivated to look for methods or techniques to increase the hardness of the cellulose acetate particles. Sampson has only been relied upon for the disclosure that the hardness of cellulose acetate can be increased by the addition of a plasticizer, not for its exact filter structure or composition. As such, the arguments are found unpersuasive.
The following is a modified rejection based on amendments made to the claims.
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 1-3, 5, 7, 12-15, 18, 20-21, 27-29, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), and Sampson (US 2013/0137561 A1).
Regarding Claims 1 and 12, Andresen, directed to filters ([0002]-[0004]), teaches an aerosol provision system component for a delivery system ([0018]-[0020], Fig. 1; Cigarette 10 comprises tobacco rod 12 and filter element 26. [0050], The filter element according to the present invention can be used with heat-not-burn devices. The cigarette is the delivery system, wherein the tobacco material of the cigarette may be heated or combusted to generate an aerosol (smoke), as would be understood by one of ordinary skill in the art. Filter element 26 is the aerosol provision system component), the aerosol provision system component comprising:
a body of material ([0020], Fig. 2; Filter element 26 comprises a filter material 40 (body of material));
a plurality of aerosol-modifying agent capsules in the body of material ([0020], Fig. 2; Filter element 26 comprises a plurality of breakable or rupturable capsules 52 comprising a flavoring agent in the filter material 40 (body of material). [0025], The capsules 52 can be broken to release the flavoring agent into the smoke (aerosol)); and,
a plurality of particles in the body of material ([0020], Fig. 2; Filter element 26 comprises a adsorbent material/particulate 50 in the filter material 40 (body of material). The adsorbent material 50 had been inserted while in a loose particulate form, such as a powder (particles). [0030], The adsorbent material 50 may be activated carbon),
wherein the aerosol-modifying agent capsules and/or particles are interspersed within the body of material ([0020], Fig. 2; The plurality of adsorbent material/particulate 50 particles and plurality of breakable or rupturable capsules 52 are interspersed within filter material 40 (body of material)),
but does not teach the component i) wherein the particles are configured such that, in use, the particles promote breaking of the aerosol-modifying agent capsules upon the application of an external force to the aerosol provision system component by a user, ii) wherein the particles comprise cellulose acetate, iii) wherein the particles comprise a plasticiser.
With respect to i), Irby, directed to filters (col 1, ln 11-15), teaches an aerosol provision system component for a delivery system (col 5, ln 29-39, Figs. 1, 3; The cigarette shown in Fig. 3 includes a cellulose acetate filter element 16, the filter element 17 shown in FIG. 1, and tobacco rod 18. Filter element 17 is the component. The cigarette is the delivery system, wherein the tobacco material of the cigarette may be heated or combusted to generate an aerosol (smoke), as would be understood by one of ordinary skill in the art), the aerosol provision system component comprising:
a body of material (col 1, ln 67 – col 2, ln 6, Fig. 1, 3; The filter element (17) of Figs. 1 and 3 comprises a filler 6, forming a body of material);
a plurality of aerosol-modifying agent capsules in the body of material (col 1, ln 67 – col 2, ln 6, Fig. 1, 3; The filter element (17) of Figs. 1 and 3 comprises a plurality of frangible capsules 8 in filler 6 (body of material). The frangible capsules 8 contain a liquid 9; and col 3, ln 39-61; The liquid comprises water and/or a flavorant which modifies a flavor of the tobacco smoke (an aerosol)); and,
a plurality of particles in the body of material (col 1, ln 67 – col 2, ln 6, Fig. 1, 3; The filter element (17) of Figs. 1 and 3 comprises a plurality of particles of active carbon 10 in the filler 6 (body of material),
wherein the aerosol-modifying agent capsules and/or particles are interspersed within the body of material (col 1, ln 67 – col 2, ln 6, Fig. 1, 3; The frangible capsules 8 (aerosol-modifying agent capsules) and the particles of active carbon 10 are interspersed within filler 6 (body of material)),
the particles configured such that, in use, the particles promote breaking of the aerosol-modifying agent capsules upon the application of an external force to the aerosol provision system component by a user (col 2, ln 62 – col 3, ln 4, Figs. 1, 3; The user applies an external force to the outer surface of the filter element (component) to rupture the frangible capsules 8; and col 4, ln 25-29; The presence of the carbon particles 10 contributes to the completeness with which the microcapsules 8 are ruptured by compression of the filler material).
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 component of Andresen wherein the particles are configured such that, in use, the particles promote breaking of the aerosol-modifying agent capsules upon the application of an external force to the aerosol provision system component by a user as taught by Irby because Andresen and Irby are directed to filters, Irby demonstrates that when a user applies an external force to the outer surface of the component to rupture the capsules, presence of the particles contributes to the completeness with which the capsules are ruptured by compression (Irby, col 2, ln 62 – col 3, ln 4, col 4, ln 25-29, Figs. 1, 3), and this involves combining prior art elements according to known methods to yield predictable results.
With respect to ii), Kido, directed to filters (pg 3, ln 9-11), a filter for an aerosol generating article (pg 3, ln 13-15, pg 7, ln 8-20, Fig. 1; Cigarette filter 120 comprises a filter plug 121 containing a cellulose acetate fiber tow 122 in which particles 124 of cellulose acetate having an acetyl substitution degree of 2.2 or more and 2.4 or less are dispersed) comprising:
a body of material (pg 7, ln 8-20, Fig. 1; Cigarette filter 120 comprises a filter plug 121 (body of material)); and
a plurality of particles in the body of material (pg 7, ln 8-20, Fig. 1; Cellulose acetate particles 124 are dispersed in the filter plug 121 (body of material))),
wherein the particles comprise a cellulose acetate (pg 7, ln 8-20, Fig. 1; Cellulose acetate particles 124).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace all or a portion of the particles taught by Andresen in view of Irby with the cellulose acetate particles as taught by Kido because Andresen, Irby, and Kido are directed to filters, Andresen states that the list of sorbent particles is non limiting (Andresen, [0030]), Kido teaches that by adding cellulose acetate particles to a filter material significantly enhances the selective filtration capacity of the filter (Kido, pg 14, ln 13-16), and this involves replacing one material or for another to yield predictable results.
With respect to iii), Sampson, directed to filters ([0001]), teaches a filter comprising cellulose acetate ([0013]-[0014], [0020]),
wherein the hardness of cellulose acetate can be increased by the addition of a plasticizer ([0004]-[0005]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a plasticizer to the cellulose acetate particles taught by Andresen in view of Irby and Kido because Andresen, Irby, Kido, and Sampson are directed to filters, Irby demonstrates that the particles must have a sufficient hardness to rupture the shell of the capsules (Irby, col 4, ln 25-29), Sampson demonstrates that the hardness of cellulose acetate can be increased by the addition of a plasticizer (Sampson, [0004]-[0005]), and Sampson demonstrates that some plasticizers have the additional advantage of providing cellulose acetate tow with an improved capacity to selectively remove semi-volatile compounds such as phenol, o-cresol, p-cresol and m-cresol from tobacco smoke (Sampson, [0004]).
Regarding Claim 2, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component wherein the aerosol-modifying agent capsules are interspersed within the body of material ([0020], Fig. 2; The plurality of adsorbent material/particulate 50 particles and plurality of breakable or rupturable capsules 52 are interspersed within filter material 40 (body of material)).
Regarding Claim 3, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component wherein the particles are interspersed within the body of material ([0020], Fig. 2; The plurality of adsorbent material/particulate 50 particles and plurality of breakable or rupturable capsules 52 are interspersed within filter material 40 (body of material)).
Regarding Claim 5, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component wherein each capsule comprises a core and a shell that surrounds the core ([0020], Fig. 2; A breakable capsule surrounding a flavoring agent must necessarily have a core (the flavoring agent) and a shell (the capsule material)).
Regarding Claim 7, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Because Andresen teaches the component wherein the body of material comprises a fibrous material, wherein the fibrous material comprises a tow comprising cellulose acetate as claimed in Claims 20-21 (Andresen, [0020], Figs. 2; The filter material 40 (body of material) may comprise a cellulose acetate tow), one of ordinary skill would reasonably expect the body of material of the prior art to have mass of at most 5.5 mg per mm axial length of the body of material as claimed, absent evidence to the contrary, since the body of material of the prior art is equivalent to the claimed body of material.
Regarding Claim 13, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component wherein the aerosol- modifying agent capsules have a diameter in the range of 0.6 and 1.4 mm ([0048]; The capsules 52 can be in the range of about 0.25 mm to about 3.5 mm in diameter).
The range for the diameter 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 Claim 14, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1, but does not teach the component wherein the particles have a particle size in the range of 0.6 and 2.4 mm.
Irby teaches a component comprising: a body of material (col 1, ln 67 – col 2, ln 6, Fig. 1, 3; The filter element 17 (component) of Figs. 1 and 3 comprises a filler 6 (body of material));
a plurality of particles in the body of material (col 1, ln 67 – col 2, ln 6, Fig. 1, 3; The filter element (17) of Figs. 1 and 3 comprises a plurality of particles of active carbon 10 in the filler 6 (body of material),
wherein the particles have a particle size in the range of 0.6 and 2.4 mm (col 4, ln 30-39, Fig. 1; The particles 10 have a mesh size between 20 and 325. This correlates to a particle size range of 0.044 mm to 0.841 mm).
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 component of Andresen wherein the particles have a particle size in the range of 0.6 and 2.4 mm as taught by Irby because Andresen and Irby are directed to filters, Irby demonstrates that when a user applies an external force to the outer surface of the component to rupture the capsules, presence of the particles having a particle size in the range of 0.6 and 2.4 mm contributes to the completeness with which the capsules are ruptured by compression (Irby, col 2, ln 62 – col 3, ln 4, col 4, ln 25-39, Figs. 1, 3), and this involves combining prior art elements according to known methods to yield predictable results.
The range for the particle size 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 Claim 15, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component comprising in the range of 5 to 100 aerosol-modifying agent capsules ([0049], The number of capsules incorporated within the relevant region of the filter element can exceed about 5, can exceed about 10, can exceed about 20, can exceed about 40, and can even exceed about 100).
Regarding Claim 18, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component further comprising a plug wrap that circumscribes the body of material, wherein the plug wrap is held in place by an adhesive ([0018]-[0023], The filter element 26 (component) comprising filter material 40 (body of material) is circumscribed along its outer circumference or longitudinal periphery by a layer of outer plug wrap 28. [0057]-[0063], Fig. 4 describes a process wherein an adhesive is used to hold plug wrap 28 in place).
Regarding Claims 20-21, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component wherein the body of material comprises a fibrous material, wherein the fibrous material comprises a tow comprising cellulose acetate ([0020], Figs. 2; The filter material 40 (body of material) may comprise a cellulose acetate tow).
Regarding Claim 27, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component wherein the component is a component for a combustible aerosol provision system or a non-combustible aerosol provision system ([0018]-[0020], Fig. 1; Cigarette 10 comprises tobacco rod 12 and filter element 26. The cigarette is a combustible aerosol provision system because the distal end of the cigarette must be combusted or heated to produce smoke (an aerosol). [0050], The filter element according to the present invention can optionally be used with heat-not-burn devices.).
Regarding Claim 28, Andresen teaches the delivery system comprising a component according to claim 1 ([0018]-[0020], Fig. 1; Cigarette 10 (delivery system) comprises tobacco rod 12 and filter element 26 (component). Andersen has been modified in view of Irby, Kido, and Sampson to yield to component of Claim 1).
Regarding Claim 29, Andresen in view of Irby, Kido, and Sampson teaches the component according to claim 1. Andresen further teaches the component wherein the aerosol-modifying agent capsules and/or the plurality of particles are interspersed within the body of material such that they are separated by a material of the body of material ([0020], Fig. 2; The plurality of adsorbent material/particulate 50 particles and plurality of breakable or rupturable capsules 52 are interspersed within filter material 40 (body of material)) such that they are separated by a material of the filter material 40).
Regarding Claims 31-32, Andresen in view of Irby, Kido, and Sampson does not teach the component wherein the particles have a ball-pan hardness greater than 95%, wherein the particles are formed from a material having a Rockwell hardness of at least 25 on the R-Scale.
The precise ball-pan hardness and Rockwell hardness would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the degree to which the capsules are ruptured is a variable which can be modified by the hardness of the particles (Irby, col 4, ln 25-29). As such, without showing unexpected results, the claimed ball-pan hardness and Rockwell hardness cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the hardness by routine experimentation to obtain the desired degree to which the capsules are ruptured, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art (see MPEP § 2144.05, II).
Claims 4, 6, 9, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), and Sampson (US 2013/0137561 A1) as applied to claim 1, in view of Jordil (US 2016/0295914 A1) as evidenced by Shibusawa (US 2003/0125418 A1).
Regarding Claims 4, 6, 9, and 16, Andresen in view of Irby, Kido, and Sampson does not teach the component wherein the body of material comprises a cavity, and wherein the aerosol-modifying agent capsules or particles are disposed within the cavity, wherein the particles are generally cylindrical, wherein the particles comprise a material having a particle density of at least 1 g/cc, and wherein the body of material has a length in the range of 4 and 12 mm.
Jordil, directed to filters ([0001]-[0002]), teaches a component ([0010], [0053], Fig. 1; Smoking article 100 includes filter 103 (component)), the component comprising:
a body of material ([0010], [0038], [0053], Fig. 1; Filter 103 (component) is a plug-space-plug filter with an upstream segment (near upstream end 113) and a downstream segment (near downstream end 115) defining a cavity containing particulate material 125 and breakable capsule 120 between them. [0053], [0055], The upstream segment and downstream segment of filter 103 may be formed from cellulose acetate tow (a body of material));
a plurality of aerosol-modifying agent capsules in the body of material ([0010], [0038], [0053], Fig. 1; Filter 103 (component) is a plug-space-plug filter with an upstream segment (near upstream end 113) and a downstream segment (near downstream end 115) defining a cavity containing particulate material 125 and at least one breakable capsule 120 between them. [0004]-[0007], [0010], [0026]-[0027], The at least one breakable capsule contains a liquid flavourant, wherein breaking the capsule releases the flavorant into the stream of aerosol); and,
a plurality of particles in the body of material ([0010], [0038], [0053], Fig. 1; Filter 103 (component) is a plug-space-plug filter with an upstream segment (near upstream end 113) and a downstream segment (near downstream end 115) defining a cavity containing particulate material 125 and breakable capsule 120 between them. [0025], [0055], The particulate material 125 includes a plurality of sorbent particles such as activated carbon),
the particles configured such that, in use, the particles promote breaking of the aerosol-modifying agent capsules upon the application of an external force to the component ([0010]-[0011], [0053], Fig. 1),
wherein the body of material comprises a cavity, and wherein the aerosol-modifying agent capsules or particles are disposed within the cavity ([0010], [0038], [0053], Fig. 1; Filter 103 (component) is a plug-space-plug filter with an upstream segment (near upstream end 113) and a downstream segment (near downstream end 115) defining a cavity containing particulate material 125 and at least one breakable capsule 120 between them),
wherein the particles are generally cylindrical ([0033]),
wherein the particles comprise a material having a particle density of at least 1 g/cc ([0025], The particulate material may be formed from a sorbent material. Examples of suitable sorbent materials include activated carbon, coated carbon, active aluminium, aluminium oxide. Aluminum oxide (alumina) has a density of 3.987 g/cc; see Shibusawa, [0055]),
wherein the body of material has a length in the range of 4 and 12 mm ([0010], [0038], [0053], Fig. 1; Filter 103 (component) is a plug-space-plug filter with an upstream segment (near upstream end 113) and a downstream segment (near downstream end 115) defining a cavity containing particulate material 125 and at least one breakable capsule 120 between them. Cavity has a length of 5 mm along the longitudinal axis of filter 103. Fig. 1 shows that the upstream segment and downstream segment are about half the length of the cavity along the longitudinal axis of filter 103. Therefore, the body of material has a length of about 10 mm).
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 component of Andresen in view of Irby wherein the body of material comprises a cavity, and wherein at least a portion of the aerosol-modifying agent capsules or particles are disposed within the cavity as taught Jordil because Andresen, Irby, Kido, Sampson, and Jordil are directed to filters, Jordil demonstrates that positioning aerosol-modifying agent capsules and/or particles in a cavity allows the particles to directly transfer a crushing force to the capsules (Jordil, [0011]), and this involves combining prior art elements according to known methods to yield predictable results.
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 component of Andresen in view of Irby wherein the particles are generally cylindrical as taught by Jordil because Andresen, Irby, and Jordil are directed to filters, and changing the cross section of the surrounding wall to cylindrical constitutes a change in form of shape to another known shape in the art. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace all or a portion of the particles taught by Irby with the material having a particle density of at least 1 g/cc (aluminium oxide) as taught by Jordil because Irby and Jordil are directed to filters, Andresen states that the list of sorbent particles is non limiting (Andresen, [0030]), Jordil states that aluminium oxide may be used as sorbent particles (Jordil, [0025]), and this involves replacing one material or for another to yield predictable results.
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 component of Irby wherein the body of material has a length in the range of 4 and 12 mm as taught by Jordil because changing the length of a body of material to another value within a known length range constitutes 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 range for the length reasonably suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), and Sampson (US 2013/0137561 A1) as applied to Claim 1, in view of Lavanant (US 2016/0302478 A1).
Regarding Claim 8, Andresen in view of Irby, Kido, and Sampson does not teach the component having a diameter greater than 7.5 mm.
Lavanant, directed to filters ([0010]), teaches a component for a delivery system ([0010], [0101], Fig. 1; Smoking article 100 includes tobacco rod 101 and filter 102 (component). [0012], Lavanant states that the smoking article may be used with a delivery system such as heated smoking device to generate an aerosol), the component comprising:
a body of material ([0101], [0104], Fig. 1; Filter 102comprises a first segment 1021 and a second segment 1022 (body of material). [0081], The filter material used to form the one or more sections of the filter element can be a fibrous filtration material, such as cellulose acetate tow);
a plurality of aerosol-modifying agent capsules interspersed within the body of material ([0101], [0104], Fig. 1; First segment 1021 of filter 102 incorporates a frangible capsule 110 of the type comprising a breakable shell containing a liquid core. The liquid in the liquid core may be a liquid flavourant (aerosol-modifying agent). [0048], Additional capsules may be provided in the longitudinal direction of the filter 102)
a plurality of particles in the body of material ([0089]-[0090], [0101], [0104], Fig. 1; First segment 1021 of filter 102 may further comprises a particulate sorbent interspersed within the body of material of the first segment 1021. The sorbent may comprise activated carbon),
wherein the component has a diameter greater than 7.5 mm ([0098], The external diameter of smoking articles according to the present invention is between about 5 mm and about 8.5 mm. [0101], Fig. 1; Smoking article 100 includes tobacco rod 101 and filter 102 (component), wherein tobacco rod 101 and filter 102 have the same diameter).
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 component of Andresen in view of Irby, Kido, and Sampson having a diameter greater than 7.5 mm as taught by Lavanant because changing the diameter of a component to another value within a known diameter range constitutes 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 11 is rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), and Sampson (US 2013/0137561 A1) as applied to Claim 1, and further in view of Fujita (US 2020/0037659 A1).
Regarding Claim 11, Andresen in view of Irby, Kido, and Sampson does not teach the component wherein the particles comprise a polymeric material.
Fujita, directed to filters ([0001]), teaches a filter ([0030], Filter) comprising:
a body of material ([0030], The filter comprising randomly oriented discrete fibres and at least one particulate additive, the (particulate) additive being dispersed within the filter. The fibers form the body of material);
a plurality of particles interspersed within the body of material ([0030], The filter comprising randomly oriented discrete fibres and at least one particulate additive, the (particulate) additive being dispersed within the filter),
wherein the particles comprise a sorbent material such as activated carbon, carbonaceous polymer resins, or combinations thereof ([0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to replace all or a portion of the particles taught by Andresen in view of Irby with the carbonaceous polymer resins as taught by Fujita because Andresen, Irby, and Fujita are directed to filters, Andresen states that the list of sorbent particles is non limiting (Andresen, [0030]), Fujita that carbonaceous polymer resins may be used as sorbent particles (Fujita, [0035]), and this involves replacing one material or for another to yield predictable results.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), and Sampson (US 2013/0137561 A1) as applied to Claim 1, and further in view of Kaljura (US 2017/0360084 A1)
Regarding Claim 17, Andresen in view of Irby, Kido, and Sampson does not teach a component wherein the pressure drop across the body of material is less than 40 mmWg.
Kaljura, directed to filters ([0001]), teaches a component ([0034], Figs. 1-2; Smoking article 10 of the example of FIG. 1 comprises a source of smokable material, such as tobacco, attached to a filter arrangement (component) which comprises a first filter section 12 and a second filter section 14), the component comprising:
a body of material ([0034], Figs. 1-2; Filter arrangement (component) comprises a first filter section 12 and a second filter section 14. [0041], The first filter section 12 and second filter section 14 are made of a known filtration material. The filtration material for both filter sections can be tow, for example, cellulose acetate tow (body of material)),
wherein the pressure drop across the body of material is less than 40 mmWg ([0034], [0049]-[0050], Figs. 1-2; The first filter section 12 has a pressure drop per unit length of 5-12 mmWg/mm, and the second filter section 14 has a pressure drop per unit length of 1 mmWg/mm. [0010], The first filter section 12 can have a length of 5 to 25 mm, the second filter section 14 can have a length of 5 to 25 mm. Assuming filter sections 12, 14 have the lowest possible filter length and pressure drop, first filter section 12 has a pressure drop of 25 mmWg, and second filter section 14 has a pressure drop of 5 mmWg. Therefore, the filter arrangement (component) is 30 mmWg),
wherein the pressure drop can be adjusted by the number of tow filaments in a particular volume or length, the cross-section of the filaments, or the degree of crimping of the filaments ([0055]),
wherein the pressure drop affects the resistance to gaseous flow and resistance to draw of the component ([0042]).
The precise pressure drop across the body of material would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the resistance to gaseous flow and resistance to draw of the component is a variable which can be modified by the pressure drop across the body of material (Kaljura, [0042]). Furthermore, the pressure drop can be adjusted by the number of tow filaments in a particular volume or length, the cross-section of the filaments, or the degree of crimping of the filaments (Kaljura, [0055]). As such, without showing unexpected results, the claimed pressure drop cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the pressure drop by routine experimentation to obtain the desired resistance to gaseous flow and resistance to draw, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art (see MPEP § 2144.05, II).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), Sampson (US 2013/0137561 A1), and Lavanant (US 2016/0302478 A1) as applied to Claim 18, in view of Jordil (US 2016/0295914 A1), as evidenced by Shibusawa (US 2003/0125418 A1).
Regarding Claim 19, Because Andresen in view of Irby, Kido, Sampson, and Levanant teaches the component according to claim 18, wherein each capsule comprises a core and a shell that surrounds the core as claimed in Claim 5 (Andresen, [0020], Fig. 2; A breakable capsule surrounding a flavoring agent must necessarily have a core (the flavoring agent) and a shell (the capsule material)),
wherein the aerosol- modifying agent capsules have a diameter in the range of 0.6 and 1.4 mm as claimed in Claim 13 (Andresen, [0048]; The capsules 52 can be in the range of about 0.25 mm to about 3.5 mm in diameter)),
wherein the body of material comprises a fibrous material comprising a tow cellulose acetate as claimed in Claims 20-21 (Andresen, [0020], Figs. 2; The filter material 40 (body of material) may comprise a cellulose acetate tow),
one of ordinary skill would reasonably expect the component of the prior art to have a mass of at most 20 mg per mm axial length of the body of material as claimed, absent evidence to the contrary, since the component of the prior art is equivalent to the claimed component.
As applied to Claim 14, the component of Andresen in view of Irby, Kido, and Sampson can be modified in view of Irby such that the particles have a particle size in the range of 0.6 and 2.4 mm as claimed in Claim 14 (Irby, col 4, ln 30-39, Fig. 1; The particles 10 have a mesh size between 20 and 325. This correlates to a particle size range of 0.044 mm to 0.841 mm).
As applied to Claim 9 and 16, the component of Andresen in view of Irby, Kido, and Sampson can be modified in view of Jordil such that the particles comprise a material having a particle density of at least 1 g/cc (Jordil, [0025], The particulate material may be formed from a sorbent material. Examples of suitable sorbent materials include activated carbon, coated carbon, active aluminium, aluminium oxide. Aluminum oxide (alumina) has a density of 3.987 g/cc; see Shibusawa, [0055]),
wherein the body of material has a length in the range of 4 and 12 mm (Jordil, [0010], [0038], [0053], Fig. 1; Filter 103 (component) is a plug-space-plug filter with an upstream segment (near upstream end 113) and a downstream segment (near downstream end 115) defining a cavity containing particulate material 125 and at least one breakable capsule 120 between them. Cavity has a length of 5 mm along the longitudinal axis of filter 103. Fig. 1 shows that the upstream segment and downstream segment are about half the length of the cavity along the longitudinal axis of filter 103. Therefore, the body of material has a length of about 10 mm).
Therefore, one of ordinary skill would reasonably expect the component of Andresen in view of Irby, Kido, Sampson, Levanant, and Jordil to have a mass of at most 20 mg per mm axial length of the body of material as claimed, absent evidence to the contrary, since the component of the prior art is equivalent to the claimed component.
Claims 22-26 are rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), and Sampson (US 2013/0137561 A1) as applied to Claim 20, and further in view of Beard (US 2012/0255569 A1).
Regarding Claims 22-26, Andresen in view of Irby, Kido, and Sampson does not teach the component wherein the total denier of the fibrous material is at most 35000, wherein the denier per filament of the fibrous material is at most 9, wherein the denier per filament of the fibrous material is at least 1, wherein the fibrous material comprises at least 1000 fibres, and wherein the fibrous material comprises at most 12000 fibres.
Beard, directed to filters ([0001), teaches a component for a delivery system ([0026], Fig. 1; Smoking article 10 comprises filter element 20 (component). [0006], Beard states that the smoking article may be a cigarette or an aerosol generating smoking article that does not combust tobacco. Therefore, the component is for use with a delivery system that either combusts or solely heats the tobacco to generate an aerosol), the component comprising:
a body of material, wherein the body of material comprises a fibrous material ([0026]-[0027], [0057], Fig. 2; Filter element 20 comprises a first section of filter material 38 (body of material). The filter material used to form the one or more sections of the filter element can be plasticized cellulose acetate tow);
wherein the total denier of the fibrous material is at most 35000, wherein the denier per filament of the fibrous material is at most 9, wherein the denier per filament of the fibrous material is at least 1, wherein the fibrous material comprises at least 1000 fibres, and wherein the fibrous material comprises at most 12000 fibres ([0057], [0091], Fig. 2; [0091] describes an example cigarette comprising filter element 20 of Fig. 2, wherein the tobacco-end filter segment (corresponding to first section of filter material 38) has a total denier of 30,000 and a fiber size of 3.3 dpf. The tobacco-end filter segment therefore includes 9,090 fibres (30,000/3.3)).
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 component taught by Andresen in view of Irby wherein the total denier of the fibrous material is at most 35000, wherein the denier per filament of the fibrous material is at most 9, wherein the denier per filament of the fibrous material is at least 1, wherein the fibrous material comprises at least 1000 fibres, and wherein the fibrous material comprises at most 12000 fibres as taught by Beard because Andresen, Irby, Kido, Sampson, and Beard are directed to filters, and Beard demonstrates that filters having the claimed total denier, dpf, and total number of fibres are conventionally known and contribute to a suitable particle removal efficiency for a smoking article (Beard, [0084], [0089]). The amounts for the total denier of the fibrous material, denier per filament of the fibrous material, and number of fibers disclosed by the prior art are within the claimed ranges, and therefore the claimed ranges are considered prima facie obvious. See MPEP § 2144.05 (I).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Andresen (US 2009/0288667 A1) in view of Irby (US 3,390,686 A), Kido (WO 2012/090659 A1, English Translation), and Sampson (US 2013/0137561 A1) as applied to Claim 1, in view of Seo (US 2021/0000168 A1)
Regarding Claim 30, Andresen in view of Irby, Kido, and Sampson does not teach the component wherein the plasticiser is present in the particles in an amount of at least 15% by weight, based on a total weight of the particles.
Seo, directed to filters ([0006]), teaches a filter component ([0062], Fig. 4; Cigarette 200 includes a tobacco rod 210 and a filter rod 220) comprising:
a body of material, wherein the material is cellulose acetate, wherein the body of material comprises a plasticizer in an amount of at least 15% by weight, based on a total weight of the body of material ([0022], The filter may include a cellulose acetate tow filter comprising cellulose acetate tow to which a plasticizer in a range of 12% to 24% is applied).
The precise plasticiser content would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the degree to which the capsules are ruptured is a variable which can be modified by the hardness of the particles (Irby, col 4, ln 25-29), and the hardness of the particles is a variable which can be modified by the plasticizer amount (Sampson, [0004]-[0005]). As such, without showing unexpected results, the claimed plasticiser content cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the plasticiser content by routine experimentation to obtain the desired degree to which the capsules are ruptured, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art (see MPEP § 2144.05, II). Further, Seo demonstrates that plasticizer amounts above 15% by weight have been disclosed in prior art.
Conclusion
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.
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/J.M.M./
Examiner, Art Unit 1755/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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