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 .
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.
Claim(s) 1-2, 5-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (KR 20200043165 with English translation) in view of Zuber et al. (U.S Pub. No. 20140305448), Jung et al. (CN112367864) and England et al. (U.S Pub. No. 20190116875).
Regarding claim 1, Jung discloses an aerosol-generating article comprising:
an aerosol-forming substrate part (210, fig. 2A); and
a cooling part (220, fig. 2A) disposed downstream of the aerosol-forming substrate part and configured to cool an aerosol formed in the aerosol-forming substrate part, wherein a sheet-type material is disposed in a rolled or folded form in the cooling part (page 9), and includes a polysaccharide material (tobacco).
Jung does not expressly disclose the cooling part comprises flavoring. Zuber discloses flavoring can be located in the aerosol-cooling element [0139]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add a flavoring to the cooling part of Jung as taught by Zuber.
Jung (‘864) discloses wherein a plurality of holes are formed in the sheet-type material (perforated). Therefore it would be obvious to one of ordinary skill in the art at the time the invention was made to make the cooling section with plurality of holes.
England discloses an aerosol-generating article with ventilation region for the cooling segment wherein the ventilation holes preferably have diameter between 0.1mm to 0.5mm overlapping with the claimed range. In case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113). In this case the claimed plurality of holes are the same as or obvious from the ventilation holes disclosed by England and Jung even though England and Jung do not explicitly disclose the punching process of these holes.
Regarding claim 2, Jung discloses wherein the sheet-type material is pleated or folded in a longitudinal direction (page 9).
Regarding claim 5, Zuber discloses wherein resistance to draw of the cooling part offers a low resistance and does not substantially affect the resistance to draw of the aerosol generating article [0114]. Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to the claimed range.
Regarding claim 6, Jung discloses a first filter part (230, fig. 2) which is disposed downstream of the cooling part and has a hollow formed therein; and a second filter part (240, fig. 2) which is disposed downstream of the first filter part and in which a hollow is not formed.
Regarding claim 7, Jung discloses a first filter part (230, fig. 2) which is disposed downstream of the cooling part and has a hollow formed therein; Jung discloses a second filter part (240, fig. 2) which is disposed downstream of the first filter part and in which a hollow is not formed instead of between the cooling part and the first filter part. Jung also discloses rearrangement of these filter parts in a different order (see fig. 4). Therefore, rearrangement of parts was held to be an obvious matter of design choice (see In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1960)).
Regarding claim 8, Jung discloses a first filter part (420, fig. 4) which is disposed upstream of the cooling part and has a hollow formed therein; and a second filter part (440, fig. 4) which is disposed upstream of the cooling part and in which a hollow is not formed (see pages 10 and 13).
Regarding claim 9, since the combination of Jung and Zuber taken together as a whole teaches the sheet-type material includes a polysaccharide and a flavoring (such as menthol). It would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to a desired amount of flavoring in the material.
Regarding claim 10, Zuber discloses the sheet-type material further includes plasticizer [0070]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to the claimed range.
Regarding claim 11, Jung discloses a thickness of the sheet-type material is within 200 micrometer (page 9) overlapping with the claimed range of 150 micro m or less. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Regarding claim 12, Zuber discloses menthol [0141] as a flavoring corresponding to the claimed a melting point of the flavoring is 80 °C or lower.
Regarding claim 13, the combination of Jung and Zuber taken together as a whole discloses the sheet-type material is configured to function as both a flavor-expressing material and a cooling material in the cooling part as Zuber discloses flavoring can be located in the aerosol-cooling element [0139].
Furthermore, perforation meets the claimed having the plurality of holes penetrating a thickness of the sheet and Jung also discloses wherein the sheet-type material is pleated or folded in a longitudinal direction of the aerosol generating article (page 9).
Response to Arguments
Applicant's arguments filed 4/6/2026 have been fully considered but they are not persuasive.
Applicant essentially argues that Jung ‘864 only discloses only teaches pores which is different from the plurality of holes and the perforations disclosed by England is for the purpose of introducing external air. Therefore it would not have been obvious for a person having ordinary skill in the art to combined the teachings of Jung ‘864 and England to arrive to the claimed invention. This argument is not persuasive because Jung ‘864 discloses the cooling section can be made from perforation (corresponding to the claimed a plurality of holes are formed by a punching process). The combination of Jung ‘864 and England taken together as a whole teaches/suggests perforating the cooling section wherein the diameter of the holes are between 0.1mm to 0.5mm overlapping with the claimed range. In case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Applicant’s arguments filed 4/6/20265 have been considered but are moot in view of the new ground of rejection.
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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/PHU H NGUYEN/Examiner, Art Unit 1747
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