DETAILED ACTION
In view of the Appeal Brief filed on 02/06/2026, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Status of the Claims
This office action is in response to Applicant’s reply filed 02/02/2026.
Claims 45 and 47-55 are pending and are subject to this Office Action.
Claims 1-44 and 46 are previously cancelled.
Response to Arguments
Applicant’s arguments, see Appeal Brief pages 5-10, filed 02/06/2026, with respect to the rejection of claim 45 have been fully considered and they are persuasive. Prior art of record Shinozaki does not make obvious a “plug section arranged so as to be the most distal component arranged at the first end of the elongate smoking article" as claimed. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in further view of Barnes et al. (US 5469871 A).
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 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 45, 47-48, 50-51, 53 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over Shinozaki et al. (US 20130133675 A1) in view of Barnes et al. (US 5469871 A).
Regarding claim 45, Shinozaki teaches an elongate smoking article (third embodiment of flavor inhalator; Fig. 9; [0132-0134]) having a first end and an opposed second end, the smoking article comprising:
a mouth end portion (mouthpiece 24; [0010]) disposed at the second end (Fig. 9);
a tobacco substrate material (tobacco material 20; [0095]) arranged toward the first end (Fig. 9);
a heat conductive material (heat conduction rod 54; Fig. 9) extending into the tobacco substrate material and in a heat exchange relationship therewith ([0133-0134]);
at least one filter section (filter 28) arranged at the mouth end portion and extending from the mouth end portion to the tobacco substrate material (Fig. 9);
and a paper wrapping material (filter holder 26; [0100]) engaged with and circumscribing the at least one filter section (Fig. 9).
Shinozaki does not explicitly teach (I) a plug section extending beyond the tobacco substrate and the heat conductive material toward the first end or (II) a perforated paper wrapping material circumscribing the filter section in this embodiment.
Regarding (I), Shinozaki teaches a modification in which a plug section (heat insulator 30; Fig. 5) extends beyond the tobacco substrate toward the first end and encompasses a heat source ([0016-0117]). Shinozaki teaches that the plug section acts to insulate the heat source and reduce visible smoke ([0117]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Shinozaki by adding the plug section to encompass the heat source because Shinozaki teaches multiple modifications and embodiments of the same flavor inhalator invention, Shinozaki furthers teaches that a plug section may be used to insulate the heat source and reduce visible smoke, and this involves use of known technique to improve a similar embodiment of the same invention in the same way.
Shinozaki does not explicitly teach that the plug section extends beyond the heat conductive material.
Barnes, directed to an elongate smoking article (cigarette 15; Fig. 1; col. 4, line 30) having a first end (lighting end; col. 3, line 24) and an opposed second end (mouth end; col. 3, line 22), comprising a tobacco substrate material (tobacco section 34; col. 5, line 58) arranged toward the first end, at least one filter section (filter element 44; col. 6, line 19), a plug section (jacket 12 surrounding fuel element 10, which serves as a heat insulator; col. 4, lines 30-35; col. 2, lines 14-24) extending beyond the tobacco substrate toward the first end (Fig. 1), teaches that the plug section 12 may be arranged so as to be the most distal component arranged at the first end of the elongate smoking article (col. 2, lines 14-24 teaches that the plug section may extend beyond each end of the article).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the plug section of Shinozaki by extending it so as to be the most distal component arranged at the first end of the elongate smoking article as taught by Barnes because both Shinozaki and Barnes are directed to elongate smoking articles comprising plug sections extending beyond a tobacco substrate, Barnes teaches that extension in this manner so as to extend slightly beyond a heat source is known in the art, one having ordinary skill in the art would recognize that this would help isolate or protect the fuel source as taught by Barnes, and this involves substituting one alternative plug section configuration for another to yield predictable results.
Regarding (II), in another embodiment (embodiment 2; Fig. 6) of the same invention, Shinozaki teaches a perforated paper wrapping material (filter holder 26 with plurality of inlet holes 32; Fig. 6; [0119]) engaged with and circumscribing the at least one filter section (Fig. 6) to cool the temperature of the smoke to an ideal temperature range before inhalation by the user ([0120]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Shinozaki by perforating the paper wrapping material 26 because Shinozaki teaches the multiple embodiments of the same flavor inhalator invention, Shinozaki furthers teaches that perforations in the paper wrapping material help to cool smoke to an ideal temperature, and this involves use of known technique to improve a similar embodiment of the same invention in the same way.
Regarding claim 47, Shinozaki teaches that the plug section comprises a plurality of fibers ([0116]).
Regarding claim 48, Shinozaki teaches that the perforated paper wrapping material comprises a plurality of perforations (air inlet holes 32; Fig. 9; [0128]).
Regarding claim 50, Shinozaki teaches that the tobacco substrate material comprises a sheet of tobacco material (tobacco material 20 may be a rolled sheet [0095]).
Regarding claim 51, Shinozaki teaches that the tobacco substrate material is between about 10 mm and about 22 mm in length ([0097] teaches a length of 5 to 30 mm, which encompasses the claimed range), the claimed thickness range overlaps the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 53, Shinozaki teaches that the smoking article defines a rod-like shape extending between the first end and the opposed second end ([0072]; Fig. 9).
Regarding claim 54, Shinozaki teaches that the perforated paper wrapper material is engaged with and circumscribes the at least one filter section and the tobacco substrate material ([0112]).
Claims 49, 52, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Shinozaki and Barnes as applied to claim 45 above, and further in view of Zemann (Components of a Cigarette).
Regarding claim 49, Shinozaki teaches that the perforated paper wrapping material may be paper ([0093]).
Shinozaki does not further specify the material composition.
Zemann, directed to an overview of industry-standard compositions of cigarettes, teaches that cellulose is an art-recognized component in cigarette paper (page 26, ¶ 3).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art that the paper material of Shinozaki comprises a cellulose material as taught by Zemann because both Shinozaki and Zemann are directed to cigarettes (flavor inhalators), Shinozaki is silent to the composition of paper wrapping material and one of ordinary skill would be motivated to look to prior art for a known and suitable cigarette paper composition, Zemann teaches art recognized paper compositions, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 52, Shinozaki teaches that the filter section comprises an acetate material ([0101]).
Shinozaki does not explicitly teach a cellulose acetate filter.
Zemann, directed to an overview of industry-standard compositions of cigarettes, teaches that cellulose acetate is an art-recognized standard component in cigarette filter (page 4, ¶ 4).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art that the filter section of Shinozaki comprises cellulose acetate as taught by Zemann because both Shinozaki and Zemann are directed to cigarettes (flavor inhalators), Shinozaki is silent to the exact acetate composition of the filter section and one of ordinary skill would be motivated to look to prior art for a known and suitable cigarette filter composition, Zemann teaches art recognized filter compositions, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 54, Shinozaki teaches that the filter may be a combination of different filter materials, such as a dual filter ([0101]).
Shinozaki does not explicitly teach at least two filter sections in end-to-end alignment.
Zemann, directed to an overview of industry-standard compositions of cigarettes, teaches that dual filters are made of two filter plugs end-to-end with the tobacco substrate (page 25, ¶ 5).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art that the dual filter section of Shinozaki comprises at least two filter sections in end-to-end alignment as taught by Zemann because both Shinozaki and Zemann are directed to cigarettes (flavor inhalators), Zemann teaches that it is known in the art that dual filters comprise two filters in alignment, and this involves applying a known teaching to a similar product to yield predictable results.
Conclusion
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755