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
This Office Action is in response to Applicant’s amendments filed 10/06/2025.
Claims 1, 3 and 6-10 are pending and are subject to this Office Action.
Claims 2, 4, 5 and 11 are cancelled.
Response to Arguments
Applicant’s arguments, see pages 2-5, filed 03/03/2026, with respect to the 103 rejection of claim 1 have been fully considered but they are not persuasive.
On pages 2-5 the Applicant argues that it would not be obvious to modify prior art of record Arae by making the tobacco granules with the density taught by White, as White teaches a structure and operating principle fundamentally different from that of Arae. The Applicant states that it would therefore constitute impermissible hindsight reasoning to make this modification.
The Examiner disagrees.
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 MPEP § 2145 (X)(A).
Arae teaches an aerosol generating article comprising tobacco granules (granular reconstituted tobacco 145; page 2).
White teaches an aerosol generating article comprising tobacco (tobacco tablet, which may be other shapes; col. 7, line 43; col. 4, lines 1-12) with a density in a range of 0.5 g/cm3 to 1.2 g/cm3 (col. 4, lines 1-12 teaches between about 0.9 and 1.2 g/cm3, which anticipates the claimed range). White teaches that this density may make heat conductance more efficient and improve smoke production (col. 4, lines 1-12). White further teaches that the tobacco granules may also include other additives (col. 2, lines 50-55).
It would be obvious to modify Arae by making the tobacco granules with a density in a range of 0.5 g/cm3 to 1.2 g/cm3 as taught by White because both Arae and White are directed to aerosol generating articles comprising tobacco, Arae is silent as to the density of the tobacco granules and one having ordinary skill in the art would be motivated to look to a similar product for a tobacco granule density, White teaches that a density in the range of 0.5 g/cm3 to 1.2 g/cm3 may improve efficiency and smoke production of tobacco products, and this involves applying a known teaching to a similar product to yield predictable results.
The Examiner maintains that White is merely used in this modification to select the density of tobacco granule and that the differences in design between Arae and White would not preclude this modification. Specifically, the fact that White teaches that the tobacco preferably be a tablet shape and Arae teaches a granule shape would not prevent application of the density to Arae. All elements required by the claim and motivation for achieving those elements are provided by the prior art. Thus, the combination does not require improper hindsight reasoning.
The following is the maintained rejection.
Claim Interpretation
Regarding claim 1, the claim recites the limitation “a density of the tobacco granules” in line 9. Upon consideration of Applicant’s arguments, see page 7 of the remarks filed 10/06/2025, the density of the tobacco granules is interpreted to refer to the density of the granules themselves, rather than the density of the granules within the article (filling density). This interpretation is supported by paragraph [0132] of the instant specification.
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 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Arae (WO 2021033637 A1; hereinafter referring to the English translation provided) in view of Haraki et al. (WO 2020194688 A1; hereinafter referring to the English translation provided) and White (US 6164287 A), as evidenced by Ecologix, Mesh to Micron Conversion Table.
Regarding claim 1, Arae teaches an aerosol-generating article (capsules 102; Fig. 1; page 6, ¶ 3) that is used with an aerosol generation device including a heater part (page 6, ¶ 3), the aerosol-generating article comprising:
a tobacco rod including a cavity segment (tobacco sections 140; page 2) having a cavity filled with tobacco granules (granular reconstituted tobacco 145; page 2);
and a filter rod (filter section 120; page 2),
wherein a size of the tobacco granules is in a range of about 30 mesh to 45 mesh (Arae teaches that a diameter of the tobacco granules is in a range of mesh 250-710 (page 8, ¶ 1). One having ordinary skill in the art would recognize that U.S. mesh and micron are alternative units for reporting particle size. Thus, it is expected that the mesh size taught by Arae is reported in microns, rather than in U.S. mesh. It is known in the art that a range of 250-710 microns is equivalent to a U.S. mesh size of 25-60 (as evidenced by Ecologix, Mesh to Micron Conversion Table). Furthermore, U.S. mesh sizes of 250 and 710 are not commonly known in the art, indicating that the mesh size taught by Arae is in microns. Thus, the particle size taught by Arae is not larger than the claimed mesh size, but rather is merely reported in different units. The claimed range of about 15 to 50 mesh overlaps with the range taught by Arae and is therefore prima facie obvious),
and the tobacco rod further includes filter segments configured to form the cavity and to prevent falling of the tobacco granules, the filter segments include a first filter segment and a second filter segment spaced apart by the cavity segment (Fig. 1; page 6, ¶ 3; page 8, ¶ 8; filter section 120 is split into two segments to include the cavity segment),
Arae further teaches that the percent volume occupied by the tobacco granules in the cavity segment should not be too high to improve ventilation and suction, and thus, the filling rate is less than 100 vol% (page 5, ¶ 3; Figs. 1, 6 depict tobacco granules 145 occupy only a portion of the cavity segment 140; page).
Arae does not specify (I) an exact percent volume occupied by the tobacco granules in the cavity segment or (II) a density of the tobacco granules.
Regarding (I), Haraki, directed to an aerosol-generating article (Abstract; page 2) comprising a tobacco rod (tobacco rod 2) including a cavity segment filled with tobacco and a filter rod (filter portion 6), teaches a percent volume occupied by the tobacco granules of 50 vol% to 80 vol% for more efficient heating and ventilation through the rod (page 6).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Arae by making the tobacco rod with a percent volume occupied by the tobacco granules of 50 vol% to 80 vol% as taught by Haraki because both Arae and Haraki are directed to aerosol generating articles comprising tobacco rods, Haraki teaches that a percent volume occupied by the tobacco granules of 50 vol% to 80 vol% improves heating and ventilation of the rod, and this involves applying a known teaching to a similar product to yield predictable results.
The claimed range of 35 vol% to 75 vol% overlaps the range taught by the prior art and is therefore prima facie obvious.
Regarding (II), White, directed to an aerosol-generating article that is used with an aerosol generating device (device 10; col. 7, line 42) including a heater part (heat source; col. 7, line 45), comprising a tobacco tablet (or tobacco of other shapes) (tobacco tablet; col. 7, line 43; col. 4, lines 1-12), teaches that tobacco shapes may have a density in a range of 0.5 g/cm3 to 1.2 g/cm3 (col. 4, lines 1-12 teaches between about 0.9 and 1.2 g/cm3, which anticipates the claimed range). White teaches that this density may make heat conductance more efficient and improve smoke production (col. 4, lines 1-12).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Arae by making the tobacco granules with a density in a range of 0.5 g/cm3 to 1.2 g/cm3 as taught by White because both Arae and White are directed to aerosol generating articles comprising tobacco, White teaches that a density in the range of 0.5 g/cm3 to 1.2 g/cm3 may improve efficiency and smoke production, and this involves applying a known teaching to a similar product to yield predictable results.
The modified invention would be expected to have a cavity segment containing sufficient empty space for the tobacco granules to easily move and be mixed upon a puff by a user, as the article is structurally equivalent to the claimed invention and would thus be expected to perform in the same way. Similarly, it would be expected that by the puff of the user, a vortex is generated in the cavity, and a portion of the tobacco granules filled in the cavity segment are mixed with other tobacco granules filled in the cavity segment that are heated by the heater part, and are heated, as the article is structurally equivalent to the claimed invention and would thus be expected to perform in the same way.
Regarding claim 3, Arae teaches that a diameter of the tobacco granules is in a range of mesh size 250-710 (page 8, ¶ 1; equivalent to 0.25mm to 0.71 mm). The claimed range of 0.3 mm to 1.2 mm overlaps the range taught by the prior art and is therefore prima facie obvious.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Arae, Haraki and White, as applied to claim 1 above, and in further view of Squires et al. (US 20050139223 A1).
Regarding claim 6, Arae teaches that the first filter segment is disposed downstream of the cavity segment (see filter segment 120, Fig. 1). Arae further teaches that the filter segments may be made of acetate fiber (page 2).
Arae is silent to the resistance to draw of the first filter segment.
Squires, directed to an aerosol generating article (filtered cigarette 11), teaches an acetate fiber cigarette filter (filter 15) disposed downstream of the cavity segment (Fig. 1; [0021]) with a resistance to draw of 50-150 mmH2O ([0011]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Arae by making the first filter segment with a draw resistance of in a range of 50 mmH20 to 150 mmH2O as taught by Squires because both Arae and Squires are directed to tobacco rods with first filter segments, Arae is silent to the draw resistance of the first filter segment and one with ordinary skill would be motivated to look to prior art for a known and suitable filter draw resistance, and this involves applying a known teaching to a similar product to yield predictable results. The Examiner notes that the draw resistance taught by Squires is not limited by length. As such, it would be expected that the same resistance to draw would be applied to any filter such that the draw resistance may be in a range of 50 mmH20/60mm to 150 mmH2O/60mm.
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Arae, Haraki and White, as applied to claim 1 above, and in further view of Taurino et al. (WO 2020064686 A1).
Regarding claim 7, Arae does not teach that the filter rod includes a cooling segment and a mouthpiece segment.
Taurino, directed to an aerosol generating article (aerosol generating article 100; Fig. 2; page 26, lines 15-29) comprising a tobacco rod (aerosol-forming rod segment 110 comprising aerosol forming substrate 130, which may comprise tobacco (page 18, lines 28-30)), teaches that the aerosol generating article comprises a filter rod (support element 140, aerosol cooling element 150 and filter element 160) including a cooling segment (aerosol cooling segment 150) and a mouthpiece segment (filter element 160 serves as a mouthpiece) (page 26, lines 19-20; Fig. 2).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Arae by using a filter rod as taught by Taurino because both Arae and Taurino are directed to aerosol generating articles, Taurino teaches that an aerosol generating article may comprise a filter rod to cool aerosol and serve as a mouthpiece, one having ordinary skill would understand that the cooling and mouthpiece functionalities of the filter of Taurino would improve user experience, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 8, as the claims are directed to an aerosol generating article, the limitation directed to an aerosol generation device heater, which is not part of the aerosol generating article, is merely intended use of the aerosol generating article. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, it is not relevant that Arae does not explicitly disclose an aerosol generation device comprising a heater part as claimed, as the claims are not directed to the aerosol generation device. It is only relevant that the aerosol generating article is capable of being used with such a device.
Arae teaches that the heater part heats the tobacco rod (page 6, ¶ 3).
Arae does not teach a configuration of the heater.
Taurino, directed to an aerosol generation device (aerosol generating device 10; Fig. 1; page 26, lines 10-14) for use with an aerosol generating article (aerosol generating article 100; Fig. 1; page 26, lines 10-14), teaches that the aerosol generation device comprises a heater part configured to heat the tobacco rod; and the heater part includes a first heating element (induction coil 30; page 27, lines 3-7) configured to heat the tobacco rod from an outside and a second heating element (susceptor assembly 120; page 27, lines 9-16) configured to heat the tobacco rod from an inside.
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 aerosol generating article of Arae for use with the aerosol generation device of Taurino because Arae is directed to an aerosol generating article and Taurino is directed to an aerosol generation device for use with an aerosol generating articles, Arae is silent to an aerosol generation device and one with ordinary skill would be motivated to look to prior art for a known and suitable aerosol generation device to use with the aerosol generating article, and this involves applying a known teaching to a similar product to yield predictable results. Thus, the aerosol generating article would be capable of use with an aerosol generation device as claimed.
Regarding claim 9, as the claims are directed to an aerosol generating article, the limitation directed to an aerosol generation device, which is not part of the aerosol generating article, is merely intended use of the aerosol generating article. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, it is not relevant that Arae does not explicitly disclose an aerosol generation device comprising a heater part as claimed, as the claims are not directed to the aerosol generation device. It is only relevant that the aerosol generating article is capable of being used with such a device.
Arae teaches that the heater part heats the tobacco rod (page 6, ¶ 3).
Arae does not teach a configuration of the heater.
Taurino, directed to an aerosol generation device (aerosol generating device 10; Fig. 1; page 26, lines 10-14) for use with an aerosol generating article (aerosol generating article 100; Fig. 1; page 26, lines 10-14), teaches that the aerosol generation device comprises a heater part configured to heat the tobacco rod; and the heater part includes a heating element (induction coil 30; page 27, lines 3-7) configured to heat the tobacco rod from an outside and a heat conduction element (susceptor assembly 120 which may comprise a conductive element; page 27, lines 9-16; page 6, lines 3-18) configured to heat the tobacco rod from an inside.
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 aerosol generating article of Arae for use with the aerosol generation device of Taurino because Arae is directed to an aerosol generating article and Taurino is directed to an aerosol generation device for use with an aerosol generating articles, Arae is silent to an aerosol generation device and one with ordinary skill would be motivated to look to prior art for a known and suitable aerosol generation device to use with the aerosol generating article, and this involves applying a known teaching to a similar product to yield predictable results. Thus, the aerosol generating article would be capable of use with an aerosol generation device as claimed.
Regarding claim 10, as the claims are directed to an aerosol generating article, the limitation directed to an aerosol generation device, which is not part of the aerosol generating article, is merely intended use of the aerosol generating article. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, it is not relevant that Arae does not explicitly disclose an aerosol generation device comprising a heater part as claimed, as the claims are not directed to the aerosol generation device. It is only relevant that the aerosol generating article is capable of being used with such a device.
Arae teaches that the heater part heats the tobacco rod (page 6, ¶ 3).
Arae does not teach a configuration of the heater.
Taurino, directed to an aerosol generation device (aerosol generating device 10; Fig. 1; page 26, lines 10-14) for use with an aerosol generating article (aerosol generating article 100; Fig. 1; page 26, lines 10-14), teaches that the aerosol generation device comprises a heater part configured to heat the tobacco rod; a particulate susceptor material (susceptor assembly 120 which may comprise a particulate susceptor assembly 520; page 27, lines 9-16; page 33, lines 5-11) is included in the tobacco rod; and the heater part includes an inductor (induction coil 30; page 27, lines 3-7) configured to inductively heat the susceptor material.
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 aerosol generating article of Arae for use with the aerosol generation device of Taurino such that a particulate susceptor material is included in the tobacco granules or the tobacco rod because Arae is directed to an aerosol generating article and Taurino is directed to an aerosol generation device for use with an aerosol generating articles, Arae is silent to an aerosol generation device and one with ordinary skill would be motivated to look to prior art for a known and suitable aerosol generation device to use with the aerosol generating article, and this involves applying a known teaching to a similar product to yield predictable results. Thus, the aerosol generating article would be capable of use with an aerosol generation device as claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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