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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/5/2025 has been entered.
Response to Arguments
Applicant’s amendments and arguments, filed 11/5/2025, have overcome the rejection(s) of claim(s) under 35 U.S.C. 102(a)(2) over Yamauchi et al due to amending the claims to incorporate subject matter not explicitly disclosed by Yamauchi et al. Therefore, the rejection of Claim(s) 1-4, 8-10 and 19-20 under 35 U.S.C. 102(a)(2) as anticipated by Yamauchi et al has been withdrawn.
The remaining rejections are maintained, but have been modified to address the amendments to the claims.
Applicant’s arguments regarding the obviousness rejections have been carefully considered, but they are not convincing.
Applicant argues that there is no motivation for the skilled person to combine ranges from different embodiments in Yamauchi to obtain values of capsule positions as defined in the claim. Accordingly, Yamauchi does not disclose, teach, or suggest the capsule placement defined in amended claim 1.
Applicant also argues that amended claim 1 defines a combination of features not disclosed or otherwise taught in Yamauchi, and no prima facie case of anticipation or obviousness is present based upon this cited reference.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the placement of the capsule, in an embodiment wherein the article is a cigarette (Figs. 1-2), Yamauchi et al provides a range of length for each portion of the article as well as for placement of the capsule with respect to the downstream end of the article. Although the dimensions were in reference to a cigarette embodiment wherein, in a fourth modification of the cigarette embodiment (Fig. 6), the article is an electronic cigarette that allows a user to inhale a fragrance of tobacco by heating the tobacco (reads on article for use in a non-combustible aerosol provision system).
Yamauchi et al describes the differences from the cigarette embodiment in the fourth modified embodiment, such as a shorter filter body, wherein difference between the length of the shorter filter body and the previously described filter body of the cigarette is occupied by a tubular portion (“It is also possible to shorten the length in which the filter body is disposed out of the total length of the filter portion, and to dispose a tube portion or other segment having a low filtration rate of the mainstream smoke in the remaining portion.” [0068]). The dimensions of the sections and placement of the capsule as previously described for the cigarette embodiment are not changed.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 depends from canceled Claim 15.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
For the purpose of this examination, claim 16 will be assumed to depend from Claim 1
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 8-10, 13-14, 16 and 19-20 are rejected under 35 U.S.C. 103 as obvious over Yamauchi et al (US 2020/0281261) in view of England et al (US 2019/0174819). Yamauchi et al is a continuation of PCT/JP2017/047022, filed Dec. 27, 2017 and which was published as WO/2019/130500 on July 7, 2019.
. Claims 1-2, 8-10: Yamauchi et al generally discloses a smoking article, which includes a cigarette, a cigar, a hand-rolled cigarette, a cigarillo, and an electronic cigarette that allows a user to inhale a fragrance of tobacco by heating the tobacco (reads on article for use in a non-combustible aerosol provision system) [0017].
Referring to Figs. 1 and 2, cigarette 11 (the article) has an upstream end (left end of article) and a downstream or mouthpiece end (right end of article). The article includes an aerosol generating rod 14 including tobacco 12 (source of aerosol-generating material), a cigarette paper 13 wrapped around the tobacco 12, a downstream section comprising filter portion 15 and a central axis C defined through the center of the aerosol generating rod 14 and filter portion 15 [0018]. The filter portion 15 includes a filter body 17 and a capsule member 23 embedded within the filter body 17 and containing a liquid containing flavorant inside a capsule shell 22 [0019].
The capsule member 23 is positioned at a distance of 15 mm or shorter, preferably shorter than 10 mm from a mouthpiece end 26 of the filter portion 15 (downstream end of the article) in the direction toward the aerosol generating rod 14.. the benefits of this arrangement, are that the user can easily crush the capsule member 23 with fingers or by biting the capsule member 23 during smoking. Furthermore, since the fragrance generating source is close to the mouthpiece end, the smoker can enjoy a stronger flavor sensation [0022].
In disclosed embodiments, the filter portion 15 has a length of 17 to 40 mm [0030]. The aerosol generating rod 14 has a length of about 20 to 70 mm [0031]. As an example, using a capsule distance from the downstream end of the article of 10 mm, a total filter length of 27 mm and a length of the aerosol generating rod of about 20 mm, the upstream end of the article to the capsule is calculated to be about 37 mm, which lies within the claimed ranges. Many other combinations of the disclosed dimensions resulting in a distance from the upstream end of the article to the capsule in the claimed range would have been immediately obvious to one of ordinary skill in the art.
Regarding Claim 9, a length of the aerosol generating rod of about 20 mm is considered to include values of less than about 20 mm.
Regarding Claim 10, the total length of the example article above is about 47 mm.
In a fourth modification of the embodiment, depicted in FIG. 6, the rod member of the smoking article is an electronic cigarette, in which an aerosol generating rod is heated by a so-called electric heater or the like [0067]. In the fourth modification of the embodiment, differences from the above smoking article smoking article are described [0067]. The rod member 46 of the smoking article is detachably inserted into recess 44 of main body 45. Because the rod is heated rather than combusted, the amount of mainstream smoke generated from the aerosol generating rod 14 is reduced as compared with the cigarette 11 of the embodiment and the filtering function of the filter portion 15 of the present modification is preferably lower than that of the filter portion 15 of the cigarette 11 of the embodiment. In order to reduce the mainstream smoke filtration of the filter portion 15, the length of the filter portion 15 in the direction of the central axis C is shorter than that in the above-described embodiment (cigarette 11). In the modification of the embodiment, the length in which the filter body is disposed out of the total length of the filter portion is shortened, and a tubular portion or other segment 51 is disposed having a low filtration rate of the mainstream smoke in the remaining portion ([0068]-[0069]). The fourth modification of the embodiment, including the main body reads on article for use in a non-combustible aerosol provision system.
The aerosol generating rod 14 includes the filler 61 including cut tobacco 12 (shredded leaves, tobacco), tobacco sheet shreds, folded or circumferentially rolled tobacco sheets, pleated tobacco sheets, or non-tobacco filler and the like, and a cigarette paper 54 wrapped around the filler 61. The cigarette paper 54 may be may be formed of paper bonded with a metal foil having a good thermal conductivity, such as an aluminum foil [0071].
Claims 3-4: The metal foil of the cigarette paper 54 is water impermeable or, at least, water impermeability would have been obvious to one of ordinary skill in the art.
Claims 13-14 and 16: Yamauchi et al discloses ventilation apertures 53 provided in the cylindrical portion 51 [0070], which is located immediately downstream of the source of aerosol generating material and immediately upstream of the capsule in the filter section. Yamauchi et al does not disclose the ventilation level or the spacing between the apertures and the upstream end of the article.
In the same field of endeavor, England et al discloses a consumable, or cartridge, for a heat-not-burn aerosol-generating device, (reads on an article for use in a non-combustible aerosol provision system) the consumable comprising a filter comprising a breakable capsule comprising an aerosol modifier, e.g.-a flavorant (Abs, [0005], [0008], [0010], [0021], [0028], [0030], [0057], [0078]). Referring to Fig. 1, the consumable 10 comprises a tobacco rod 1 (a source of aerosol generating material), and a downstream section comprising passage 7, filter 3 containing a capsule 5 and a further short passage between the filter and the mouth end 4 of the consumable [0061].
England et al also discloses an aerosol-generating device comprising the consumable inserted or insertable therein to be heated to form an inhalable aerosol (Claim 23, [0070]). The aerosol-generating device and consumable comprise a non-combustible aerosol provision system.
England et al discloses a broad variety of size and placement of ventilation holes and further discloses that ventilation holes are positioned so as to provide effective cooling to the consumable [0074], therefore the ventilation level is a result-effective parameter that would have been optimized to provide the desired cooling to the consumable.
England et al further discloses that ventilation holes, or apertures, are placed at least 11 mm and up to 20 mm from the second end 4 (mouth end) of the consumable [0075]. The location of the ventilation holes is positioned outside of aerosol generating device such that user does not block the ventilation holes when the consumable is in use. in use. By locating the ventilation holes outside of the device, non-heated air is able to enter the consumable through the ventilation holes to aid with the cooling of the aerosol in use. The location of the ventilation holes is thus shown to be a result-effective parameter that would have been optimized to provide the desired cooling to the consumable.
Claim 19: Crimping is not required in the source of aerosol-generating material, therefore uncrimped material would have been an obvious embodiment.
Claim 20: the device depicted in Fig. 6 with the rod member 46 of the smoking article detachably inserted into recess 44 of main body 45 reads on a non-combustible aerosol provision system comprising a non-combustible aerosol provision device (main body) and an article (smoking article described herein) ([0067]-[0068]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi et al in view of England et al and as evidenced by Shi et al (US 2005/0000531).
Yamauchi et al and England et al do not disclose the basis weight of the moisture impermeable wrapper. However, the basis weight of wrapping material which circumscribes the smokable material (source of aerosol generating material) is known to be a result effective variable selected by one of ordinary skill in the art to provide optimal performance in the finished product, as well as to meet runnability standards of the high-speed production processes preferred by cigarette manufacturers (for evidence, see Shi et al, [0191]).
Claims 6-7, 11-12, 17-18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yamauchi et al in view of England et al and further in view of Arndt et al (US 2021/0345659).
Claims 6 and 21: Yamauchi et al discloses a tubular portion or other segment 51 disposed immediately downstream of the source of aerosol generating rod 14 and immediately upstream of the filter portion ([0068]-[0069]). Yamauchi et al discloses a heating element disposed to surround the recess 44 in the a non-combustible aerosol provision system comprising a non-combustible aerosol provision device (main body) discussed above ([0067]-[0068]).
Yamauchi et al does not disclose the internal diameter of the tubular portion or other segment of the moisture impermeable wrapper or that the heating device comprises a heating element configured to be inserted into the article.
In the same field of endeavor, Arndt et al discloses an heated (non-combustible) aerosol-generating article 1000 (Abs, [0009]) comprising an aerosol-generating substrate 1020, a hollow cellulose acetate tube 1030, a spacer element 1040 (the hollow cellulose acetate tube 1030 and spacer element 1040 correspond to the tubular portion or other segment 51 of Yamaguchi et al), and a mouthpiece filter 1050 ([0251], Fig. 1). Arndt et al further discloses an aerosol generating system including a device comprising a cavity for insertion of the aerosol generating article and a heating element to heat the aerosol generating article and produce an aerosol therefrom (Abs, [0256], Fig. 2).
Arndt et al discloses that the heating element is preferably a heater blade or pin adapted to be inserted into the aerosol-generating substrate so that the substrate is heated from inside. Alternatively, the heating element may partially or completely surround the substrate and heat the aerosol-generating substrate circumferentially from the outside [0210]. Therefore, providing a heater for insertion into the aerosol-generating component and a heater surrounding the aerosol-generating component are disclosed as functionally equivalent options. It would therefore have been obvious to one of ordinary skill in the art to provide a heating element configured for insertion into the aerosol-generating component of the article of Yamauchi et al in view of Arndt et al as a functionally equivalent and preferred option.
Regarding Claim 6, Arndt et al discloses a hollow tubular portion adjacent to and downstream of the aerosol-generating substrate. The tube acts to prevent the aerosol-generating substrate from being forced along the aerosol-generating article towards other downstream elements when a heating element is inserted into the aerosol-generating substrate. The tube also acts as a spacer element to separate the downstream elements from the aerosol-generating substrate [0194]. It would have been obvious to one of ordinary skill in the art to provide a tubular portion adjacent to and downstream of the aerosol-generating material of England et al in view of Arndt et al to provide the disclosed benefits.
Although the inner diameter of the tubular portion is not specified, the inner diameter is necessarily smaller than the diameter of the plug of aerosol-generating substrate in order to perform the disclosed functions. Arndt et al discloses that the diameter of the plug of aerosol-generating substrate can be in the form of a rod having a diameter of between about 5 mm and about 10 mm [0192]. Therefore, the inner diameter of the tubular portion is less than about 5 mm in some embodiments, and obtaining an inner diameter in the claimed range would have been obvious to one of ordinary skill in the art absent convincing evidence of unexpected results commensurate in scope with the claims.
Claim 7: Arndt et al discloses that the tubular portion is made of cellulose acetate in some embodiments (0194], [0251]), therefore a cellulose acetate tow would have been an obvious fibrous material from which the tubular portion is made.
Claims 11-12 and 17-18: Yamauchi et al discloses that the tobacco source of aerosol-generating material includes a filler of cut tobacco (shredded leaves, tobacco), tobacco sheet shreds, folded or circumferentially rolled tobacco sheets, pleated tobacco sheets, or non-tobacco filler and the like [0071].
Arndt et al discloses that the homogenized plant material can be provided as one or more sheets of aerosolizable material comprising tobacco and a binder (reads on reconstituted tobacco material) (Abs, [0016], [0107], [0121], [0168], [0171]). The sheet has a grammage, or area density between about 100 g/m2 and about 300 g/m2 and a thickness of between 100 micrometers and 600 micrometers ([0126]-[0127]). In some embodiments, the sheet is formed into strands or strips formed by cutting or shredding [0124].. The strands are the same length as the plug and preferably extend substantially longitudinally along the length of the aerosol-generating substrate, aligned with the longitudinal axis and are aligned substantially parallel to each other ([0141]-[0142]). Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to provide the tobacco filler of Yamauchi et al as reconstituted tobacco material cut into strands or strips and arranged as claims as disclosed by Arndt et al with a reasonable expectation of success in obtaining a suitable non-combustible smoking article.
Conclusion
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/DENNIS R CORDRAY/Primary Examiner, Art Unit 1748