DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-2 and 8-16 are pending. Claims 1 and 11 have been amended. Claims 14-16 are new.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 8/19/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2 and 8-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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.
Claims 1-2 and 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Gidding (US 2009/0007926 A1) in view of Lynch et al. (US 11,666,842 B2) and Nelson (US 5,230,800 A).
Regarding claim 1, Gidding discloses a sidestream smoke removing device (“smoking unit”, ¶ 0064) comprising:
a housing (“proximal housing 2”, Fig. 3, ¶ 0064) having a smoking space (“combustion space 15”, Fig. 3, ¶ 0064) defined therein;
an article inserting part (“mouthpiece 9”, Fig. 3, ¶ 0064) positioned on one end of the housing and having an open area (“holding ring 10”, Fig. 3, ¶ 0064) through which a smoking article (“cigarette S”, Fig. 3, ¶ 0064) is inserted into the smoking space; and
a sidestream smoke processing part (combination of “filter 26” and “fans 21, 22”, Fig. 3, ¶ 0070) positioned at a distance from an upstream end of the smoking article inserted into the smoking space (Fig. 3) and configured to process sidestream smoke (“tobacco smoke”, ¶ 0071) produced from the smoking article,
wherein the sidestream smoke processing part comprises:
a filter (“filter 26” comprises “HEPA filter 28”, Figs. 3 and 8, ¶ 0071) comprising a pleated HEPA filter (“HEPA filter is constructed from an elongate strip which is first pleated”, Fig. 8, ¶ 0072) capable of filtering the sidestream smoke (¶ 0071).
However, Gidding does not disclose that the pleated HEPA filter comprises a plurality of corrugations defining one or more ridges formed in parallel at constant distances, wherein a number of the parallel ridges defined by the plurality of corrugations of the pleated HEPA filter is equal to or greater than 5 and less than 20, wherein a height of each ridge defined by a respective corrugation of the pleated HEPA filter is equal to or higher than 5 mm and lower than 20 mm, and wherein a grade of the pleated HEPA filter is H13.
Lynch, in the same field of endeavor, teaches a pleated HEPA filter (“filter cartridge”, Fig. 11, Col. 6, Line 55; which may be a “pleated” “HEPA Class Filter”, using the bottom-right filter cartridge in Fig. 10) comprising a plurality of corrugations defining one or more ridges formed in parallel at constant distances (see Fig. 10),
wherein a number of the parallel ridges defined by the plurality of corrugations of the pleated HEPA filter is equal to or greater than 5 and less than 20 (as the diameter of the filter cartridge is “5 mm – 49 mm”, Fig. 11, and the preferred number of pleats per inch is “10-15 pleats per inch”, Col. 9, Lines 27-28, the number of parallel ridges is between 2 and 29; since the range 2 to 29 overlaps the claimed range of greater than 5 and less than 20, a prima facie case of obviousness exists, MPEP § 2144.05(I)),
wherein a height of each ridge defined by a respective corrugation of the pleated HEPA filter is equal to or higher than 5 mm and lower than 20 mm (the preferred height of each ridge is “0.3 inches-0.6 inches for pleat depth”, Col. 9, Line 28, which is 8 mm to 15 mm; since the range 8 mm to 15 mm falls within the claimed range of higher than 5 mm and lower than 20 mm, the range is anticipated, MPEP § 2131.03),
wherein a grade of the pleated HEPA filter is H13 (“HEPA . . . or any other filter material that provides filtration efficiency in the range of 95%→99.999999% for particulate matter sizes less than 300 nm in diameter at face velocities between 0.2 cm/s-300 cm/s”, Col. 9, Lines 31-37; as H13 grade HEPA filters remove at least 99.95% of airborne particles 0.3 µm in diameter, this range includes H13 grade HEPA filters).
One of ordinary skill in the art would have understood that there was a benefit to using a filter as taught by Lynch with a high HEPA grade in that it filters out a high level of particulates (Col. 6, Lines 60-63). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used the filter taught by Lynch in the device taught by Gidding in order to obtain this benefit.
However, Gidding and Lynch do not explicitly disclose wherein the pleated HEPA filter comprises a base layer and a filter layer, the base layer being a non-woven paper fabricated by a spunbond process, and the filter layer being a discontinuous fiber fabricated by a melt-blown process, wherein both surfaces of the base layer are coated with the filter layer.
Nelson, in the field of filters, teaches a filter (“filter web 12”, Col. 2, Line 41, Fig. 1) comprising a base layer (“scrim 11”, Col. 2, Line 22, Fig. 1), and a filter layer (“filter web 10” and “web 10’”, Col. 2, Lines 23-24, Fig. 1), the base layer being a non-woven paper fabricated by a spunbond process (“A typical scrim material would be a spunbond polypropylene nonwoven web.”, Col. 3, Lines 17-18), and the filter layer being a discontinuous fiber fabricated by a melt-blown process (webs of fibers can be formed by “melt blowing”, Col. 1, Lines 11-17), wherein both surfaces of the base layer are coated with the filter layer (“the scrim is a center layer between two outer nonwoven filter layers”, Col. 2, Lines 26-27). Nelson also teaches an advantage of this layered filter design in that it provides particularly uniform filters with low variability (Col. 2, Lines 31-32). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used the layered filter design taught by Nelson in the pleated HEPA filter taught by Gidding in view of Lynch, in order to obtain this benefit.
Although Nelson is in the field of filters, it is reasonably pertinent to the particular problem with which Gidding (and the current application) was concerned (i.e., filtration). One of ordinary skill in the art would have looked to prior art concerning filters because Gidding teaches using filters (see MPEP § 2141.01(a)(I)).
Regarding claim 2, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Gidding further discloses wherein the pleated HEPA filter is applied to be compliant with a vertical internal cross-section of the sidestream smoke removing device at a position to which the pleated HEPA filter is applied (Fig. 3).
Regarding claim 8, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Gidding also discloses the device further comprising a ventilation fan (“fans 21, 22”, Fig. 3, ¶ 0070) configured to allow the sidestream smoke to be discharged through the filter (¶ 0070).
Gidding does not explicitly disclose the flow rate of gas passing through the filter when the ventilation fan is operating in the sidestream smoke removing device to determine if the flow rate ranges from 0.8 L/min to 3.0 L/min. However, Gidding teaches that the fans should ensure that the tobacco smoke accumulating in the combustion space can be discharged in the direction of the filter space (¶ 0070). The efficacy of Gidding’s fans for this result depends on the flow rate of gas passing through the filter when the ventilation fan is operating in the sidestream smoke removing device. If the fans are operating too slowly and the flow rate is too low, the tobacco smoke may not be completely discharged in the direction of the filter space, leaving smoke behind that could exit the device through the mouthpiece without being filtered. If the fans are operating too rapidly and the flow rate is too high, the fans may disrupt the burn rate of the cigarette, resulting in a negative user experience. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the flow rate of gas passing through the filter when the ventilation fan is operating in the sidestream smoke removing device such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 9, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 2, as stated above. Gidding does not explicitly disclose the vertical internal cross-sectional area of the sidestream smoke removing device to determine if the area ranges from 100 mm2 to 2,500 mm2. However, Gidding teaches that the device should be portable but also include a filter unit and one or more tobacco smoke displacing units (¶ 0002, 0008). The efficacy of Gidding’s device for this result depends on the vertical internal cross-sectional area of the sidestream smoke removing device. If the vertical internal cross-sectional area is too large, the device will no longer be portable. If the vertical internal cross-sectional area is too small, then the device will not be large enough to fit all of the components taught by Gidding. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the vertical internal cross-sectional area of the sidestream smoke removing device such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 10, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Gidding also discloses the device further comprising a ventilation fan (“fans 21, 22”, Fig. 3, ¶ 0070) configured to allow the sidestream smoke to be discharged through the filter (¶ 0070),
wherein a vertical cross-section of the sidestream smoke removing device is divided between the ventilation fan and the filter (divided at “partition wall 20”, Fig. 3), and the exposed filter is configured to be attachable to and detachable from the sidestream smoke removing device (¶ 0078).
Regarding claim 11, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Gidding also teaches the device further comprising a temperature sensor (“sensor 31”, Fig. 9, ¶ 0077) along a length of the smoking space (Fig. 9) and configured to measure a temperature of the inserted smoking article (¶ 0077); and
a controller (“control circuit”, ¶ 0077) configured to, based on a temperature obtained by the temperature sensor, determine a degree of progress of a combustion of the smoking article (¶ 0077).
Regarding claim 12, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 11, as stated above. Gidding also teaches that based on temperatures obtained by the temperature sensor, the controller is configured to determine at least one of an orientation or movement of the inserted smoking article (based on temperatures obtained by the temperature sensor, the controller determines that the smoking article is located inside the device and smoked so far that the burning part is located close to the sensor, ¶ 0077).
Gidding does not explicitly show that the temperature sensor comprises a plurality of temperature sensors. However, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use more than one temperature sensor. It has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); MPEP § 2144.04(VI)(B)). Therefore, it would have been obvious to have the controller configured to determine at least one of an orientation or movement of the inserted smoking article based on temperatures obtained by the plurality of sensors, as one of ordinary skill in the art would have understood that multiple sensors would provide the benefit of supplying more information regarding the orientation and movement of the smoking article versus the amount of information that can be obtained using only one sensor.
Regarding claim 14, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Gidding also teaches wherein the smoke removing device comprises only one pleated HEPA filter (Fig. 8).
Regarding claim 15, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Nelson also teaches wherein the filter comprises only the base layer, and the filter layer coated on both surfaces of the base layer (Col. 2, Lines 39-46, Fig. 1). Therefore, in the device of the combination the pleated HEPA filter comprises only the base layer, and the filter layer coated on both surfaces of the base layer.
Regarding claim 16, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Gidding also teaches wherein the smoke removing device comprises only one pleated HEPA filter (Fig. 8). Nelson also teaches wherein the pleated HEPA filter comprises only the base layer, and the filter layer coated on both surfaces of the base layer (Col. 2, Lines 39-46, Fig. 1). Therefore, in the device of the combination the pleated HEPA filter comprises only the base layer, and the filter layer coated on both surfaces of the base layer.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Gidding (US 2009/0007926 A1) in view of Lynch et al. (US 11,666,842 B2) and Nelson (US 5,230,800 A) as applied to claim 1 above, and further in view of Tatsuta et al. (US 2022/0071304 A1).
Regarding claim 13, Gidding in view of Lynch and Nelson teaches the sidestream smoke removing device according to claim 1, as stated above. Gidding also discloses the device comprising a vent hole (“openings 12, 13”, Fig. 5, ¶ 0075) through which air enters into the smoking space (“oxygen required for combustion is supplied via openings 12, 13”, “direction P3” in Fig. 3, ¶ 0075); and
a controller (“control circuit”, ¶ 0077).
However, Gidding does not disclose that the controller is configured to control a degree of opening of the vent hole. Instead, the vent hole remains open, and the user can manually close it by, for example, placing their mouth over it (¶ 0075).
Tatsuta, in the same field of endeavor, teaches a vent hole (“vent 15”, Fig. 3, ¶ 0068) through which air enters is formed in a housing (“housing 11B”, Fig. 3, ¶ 0068), and a controller (“controller 50”, ¶ 0086) configured to control a degree of opening of the vent hole via a vent adjusting mechanism (“vent adjusting mechanism 94 adjusts the size of the opening area of the vent 15 in response to an instruction from the controller 50”, ¶ 0086). One of ordinary skill in the art would have understood that there is a benefit to including a vent adjusting mechanism in the vent hole in that it allows for automated control of the degree of opening of the vent hole via the controller (¶ 0086), which allows for more precise control over the amount of air entering the housing. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the vent hole taught by Gidding to include the vent adjusting mechanism taught by Tatsuta in order to achieve this benefit. In the device of the combination, the controller would be configured to control a degree of opening of the vent hole.
Tatsuta further teaches wherein the controller is configured to adjust the open area based on the insertion of the smoking article (¶ 0092, 0097).
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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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747