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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09 April 2026 has been entered.
Status of the Claims
This office action is in response to Applicant’s amendment filed on 09 April 2026:
Claims 1-3, 6, 10, 13-15, 20-21 and 24 are pending
Claims 16, 20-21 and 24 are withdrawn
Claims 1, 6 and 13 are amended
Claims 4-5, 7-9, 11-12, 17-19, 22-23 and 25 are cancelled
Claims 26 and 27 are new
Response to Arguments
Applicant's arguments filed 09 April 2026 have been fully considered but they are not persuasive.
On Pages 5-7 of Applicant’s Remarks, Applicant has incorporated limitations recited in Claim 12 into amended Claim 1 and argues that Gimkiewicz does not disclose a hollow section because the separation that Examiner alleges as the hollow section is disclosed to be a heat exchanger to cool an aerosol as it passes through the smoking article. Applicant further states that the inclusion of the heat exchanger would also inhibit the transmission of light through the cross-section as required by amended Claim 1.
Examiner disagrees, noting that while Gimkiewicz may state that the separation is “preferably filled…by a heat exchanger” [0036], this is merely a preference and not a required addition in the article’s separation portion. Therefore, one ordinarily skilled in the art can reasonably conclude from Gimkiewicz’s disclosure that if the separation is not preferably filled with a heat exchanger, said separation would be a hollow portion formed by the outer paper wrapper of the smoking article.
On Page 7 of Applicant’s Remarks, Applicant argues that Examiner fails to provide a rationale as to why the perforations would be disposed on the hollow section of Gimkiewicz’s wrapper.
Examiner notes that a rationale was in fact provided in the original rejection. As previously stated, the rearrangement of parts without modifying the operation of the device is held to be an obvious matter of design choice that gives predictable results (see MPEP § 2144.04.VI.C).
Since Gimkiewicz does not disclose a specific location in which the perforations/indicia must be disposed on the wrapper, the rearrangement would be well within the ambit of one ordinarily skilled in the art to predictable result in a smoking article with indicia that is capable of being detected by a detector unless Applicant can provide specific evidence of the contrary.
On Page 7 of Applicant’s Remarks, Applicant argues that there is no benefit to placing the perforations on a hollow and transparent section as Gimkiewicz uses reflected light off the exterior of the smoking article to detect the pattern [0057]. No further arguments or evidence was provided to support Applicant’s claims.
Examiner notes that while Applicant claims that there are no benefits to arranging the pattern on the hollow transparent section, that does not mean that the perforation pattern will not function as a machine-readable pattern. As previously stated, so long as there is a reasonable expectation that the pattern is functional as a machine-readable pattern, arranging it on the hollow transparent section is within the ambit of one ordinarily skilled in the art unless evidence of the contrary is provided.
The following is a modified rejection based on amendments to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 26 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 26 further describes the machine-readable pattern as “not substantially communicate with a vapor flow path in the smoking article” is considered indefinite because the term “substantially” is considered indefinite because the claim does not set a clear criteria or range for determining what is considered as “substantially”. Therefore, Claim 26 is considered indefinite for reciting the term “substantially”.
Based on the Applicant’s disclosure, it would appear that that machine-readable pattern’s perforation and/or cavities are sized such that they do not substantially communicate with the vapor flow path, wherein the Applicant’s disclosure provides a specific diameter range between 1 and 0.072 mm (see Page 10, Specifications).
For examination purposes, Claim 26 is interpreted to recite the following:
“wherein the machine-readable pattern’s perforations have a diameter between 1 and 0.072 mm such that it does not substantially communicate with a vapor flow path in the smoking article”.
Examiner further notes that the recitation of “substantially communicate with a vapor flow path” is considered a functional characteristic of the perforation sizing and therefore would be considered an inherent attribute of said perforations.
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.
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, 6, 10, 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Gimkiewicz et al (Publication No. US20190261682A1) in view of Silverschotz et al (Patent No. US5137304A) and Nappi (Publication No. US20160000141A1, cited in IDS dated 08 December 2022).
Regarding Claim 1, Gimkiewicz discloses a smoking article for use in an aerosol generation device [0009];
comprising a machine-readable pattern (i.e., indicia) representing coded data (i.e., barcode) on a surface area of a layer (i.e., outer wrapper) comprised by the smoking article ([033, 0036, 0052, 0061]; barcode pattern on the article’s wrapper can be read by an imaging sensing module, implying the pattern/barcode is machine-readable);
Gimkiewicz further discloses that the indicia are a printed pattern such as dots or a barcode [0061]. Gimkiewicz does not disclose the following:
the pattern is formed by a plurality of perforations of the layer in the surface area;
article is configured in a way that light can be transmitted through a cross section of the article;
light can be transmitted through the cross section and then through the perforations.
Regarding (I), Silverschotz, directed to encoding information on paper, discloses that a machine-readable coded pattern can be formed on said paper using small visually unnoticeable holes or perforations, allowing the code to be applied anywhere on a paper sheet without visually interfering with any printed message on the paper (Col. 3, Lines 24-40, 55-60; perforated code is machine-readable via an optical reader; disclosed paper sheet is considered equivalent to a smoking article wrapper that is also made of paper).
Therefore, it would have been obvious to one ordinarily skilled in the art to construct the machine-readable pattern disclosed by Gimkiewicz to be formed by perforations as disclosed by Silverschotz, as both are directed to a machine-readable coded pattern on a paper material, where Silverschotz teaches the advantage of using perforations which will not visually impact the paper material as they can be constructed to be extremely small and still be detectable by an optical reader (Col. 3, Lines 24-40, 55-60); this also involves applying a known information encoding method to a similar material (i.e., paper) to yield predictable results.
Regarding (II), Nappi, directed to a smoking article with indicia (i.e., machine-readable pattern), discloses that the indicia marking can be provided on a smoking article wrapper such as a tipping paper, plug, wrap, or any other suitable wrapper such as a film that is substantially or entirely transparent (i.e., allows light to be transmitted through) [0016-0018].
Gimkiewicz discloses a smoking article wrapped by an outer wrapper that has indicia placed on said wrapper, and further discloses a separation portion of the article which can be considered as a hollow section when it is not preferably filled with a heat exchanger [0036]. Since Nappi discloses that a smoking article wrapper can be a substantially thin or transparent film, one ordinarily skilled in the art could reasonable construct Gimkiewicz’s wrapper to be a transparent film material, thus making the separation (i.e., hollow) section of Gimkiewicz’s wrapped smoking article capable of transmitting light through its cross-section by virtue of its transparency.
Regarding (III), it should be noted that rearrangement of parts without modifying the operation of the device is held to be an obvious matter of design choice that gives predictable results (see MPEP § 2144.04.VI.C). Modified Gimkiewicz discloses that the machine-readable perforation pattern is located on the outer wrapper but does not specify where on the outer wrapper.
As such, one ordinarily skilled in the art could form the machine-readable perforation pattern in any location on the wrapper such as where the wrapper wraps around the separation (i.e., hollow) section of modified Gimkiewicz’s smoking article. Since the wrapper is transparent, it is reasonably understood that light will pass through the hollow section and also through the perforations located on said hollow section.
Therefore, one ordinarily skilled in the art could rearrange the perforation encoded pattern disclosed by modified Gimkiewicz to be located on the transparent wrapper around the separation/hollow section so that light can transmit through the wrapper and then through the perforations, so long as the perforation patterns can still be machine-readable.
Regarding Claim 6, Silvershotz further discloses the perforations are provided with different distances between each other (see Fig. 1; the perforations 30 are shown to be distanced from each other in varying distances).
Regarding Claim 10, Silverschotz further discloses the machine-readable coded pattern perforations are typically seven thousandths of an inch in diameter (Col. 3, Lines 24-40; disclosed diameter of 0.007 inches is equivalent to 0.178 mm, which is within the claimed diameter range of 1 to 0.072 mm).
Regarding Claim 26, Silverschotz further discloses the machine-readable coded pattern perforations are typically seven thousandths of an inch in diameter (Col. 3, Lines 24-40; disclosed diameter of 0.007 inches is equivalent to 0.178 mm, which is within the claimed diameter range of 1 to 0.072 mm).
Examiner notes that while Silverschotz does not explicitly state that the machine-readable pattern does not substantially communicate with a vapor flow path in the smoking article as recited in Claim 26, the Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary (see MPEP § 2112.01.I).
In this case, Examiner points out that Applicant’s specification explicitly states that the machine-readable pattern’s perforation and/or cavities are sized such that they do not substantially communicate with the vapor flow path. This indicates that the degree of communication is an inherent property of the machine-readable pattern’s perforation hole size and as such, the prior art would meet the recited limitations so long as it is within the disclosed diameter range claimed.
Therefore, Silverschotz, which discloses the claimed perforation diameter range, will predictably result in a machine-readable pattern that inherently will not substantially communicate with a vapor flow path unless evidence of the contrary is provided.
Regarding Claim 27, Modified Gimkiewicz does not explicitly disclose the machine-readable pattern does not create a deviation of a pressure drop in a vapor flow path of more than +/- 10 mmWC in the smoking article as compared to the smoking article without the machine-readable pattern.
However, it should be noted that the Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary (see MPEP § 2112.01.I).
In this case, Applicant’s disclosure notes that the ventilation profile of a smoking article is related to the pressure drop in a vapor flow path, wherein said profile is dependent on the code pattern such as the diameter of the perforations. As previously noted, Modified Gimkiewicz discloses the claimed diameter range for the perforations (see Claims 10 and 26 rejections above).
Therefore, one ordinarily skilled in the art would reasonably conclude that if Modified Gimkiewicz meets the limitations for the perforation diameter size, said perforations will result in a device with the functional characteristic of a pressure drop in a vapor flow path that does not deviate more than than +/- 10 mmWC in the smoking article unless evidence of the contrary is provided.
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gimkiewicz et al (Publication No. US20190261682A1) in view of Silverschotz et al (Patent No. US5137304A) and Nappi (Publication No. US20160000141A1, cited in IDS dated 08 December 2022) as applied to Claim 1 above, and further in view of Beard et al (Publication No. US20120255569A1).
Regarding Claim 13, Gimkiewicz further discloses the smoking article comprising an aerosol generating substrate, a filter (i.e., filter plug), and a separation between the substrate and filter that can be filled with a heat exchanger such as a crimped PLA material [0036]. Gimkiewicz does not specifically disclose that the separation between the substrate and filter has a hollow tubular element.
However, it should be noted that Gimkiewicz discloses that the separation section is merely preferably filled with a heat exchanger, implying that it is not necessary for it to be filled with one. As such, if the separation portion is not filled with said heat exchanger material, then the separation is will be empty and considered as a hollow tubular section.
Alternatively, Beard, directed to a cigarette (i.e., smoking article), discloses said cigarette comprises of a filter element (20) and aerosol-generating substrate (Tobacco rod 20), wherein the filter element comprises a second section (36) of filter material (i.e., filter) and a first section (38) of filter material comprising of a tube (48) (i.e., hollow tubular element) located between the first filter section and substrate (Fig. 2; [0057-0058]).
Therefore, it would have been obvious for one ordinarily skilled in the art to construct the smoking article disclosed by Gimkiewicz to further comprise a hollow tubular element as disclosed by Beard, as both are directed to a smoking article/cigarette, where one ordinarily skilled in the art could reasonably add another hollow filter section as disclosed by Beard, to a similar smoking article disclosed by Gimkiewicz, to predictably yield a modified smoking article capable of generating an aerosol and also have an encoded information pattern applied to said smoking article.
Regarding Claim 14, Modified Gimkiewicz discloses an outer wrapper that wraps the smoking article and its parts comprising of an aerosol- generating substrate, the hollow tubular element and the filter (Gimkiewicz [0036]; discloses that wrapper wraps the entire smoking article which implies it also wraps all its individual parts; see Claim 13 rejection for modification of hollow tubular element). Modified Gimkiewicz also discloses that the machine-readable pattern is formed by perforations formed on the outer wrapper (see Claim 11 rejection for modification).
Modified Gimkiewicz does not disclose the following:
the wrapper comprises a tipping paper for holding the aerosol- generating substrate, the hollow tubular element and the filter
the machine-readable pattern is formed by perforations in the tipping paper.
Regarding (I), Beard, directed to a cigarette (i.e., smoking article), discloses said cigarette comprises of a filter element (20) and aerosol-generating substrate (Tobacco rod 20), wherein the filter element comprises a second section (36) of filter material (i.e., filter) and a first section (38) of filter material comprising of a tube (48) (i.e., hollow tubular element) located between the first filter section and substrate (Fig. 2; [0057-0058]). The filter element and tobacco rod are wrapped by a plug wrap (i.e., outer wrapper) and an additional tipping material (i.e., tipping paper) [0028].
Therefore, it would have been obvious for one ordinarily skilled in the art to construct the smoking article disclosed by modified Gimkiewicz to further comprise a tipping material/paper as disclosed by Beard, as both are directed to a smoking article/cigarette, where one ordinarily skilled in the art could reasonably add another tipping paper to wrap the smoking article as disclosed by Beard, to a similar smoking article disclosed by modified Gimkiewicz, to predictably yield a modified smoking article capable of generating an aerosol and also have an encoded information pattern applied to said smoking article.
Regarding (II), Beard further discloses that the tipping material/paper are provided with a series of perforations (30) that extend through the tipping material and plug wrap (i.e., outer wrapper) [0028].
It is noted that while Bear does not disclose the perforations are used to form a machine-readable pattern, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (see MPEP § 2112.01.I). In this case, Beard discloses perforations on a tipping material which matches the recited structure of the claims (i.e., perforations in a tipping paper). As such, the claimed functionality of the perforations being a machine-readable pattern is presumed to be inherent in the perforations disclosed by Bear unless proven otherwise.
Therefore, it would have been obvious for one ordinarily skilled in the art to construct the smoking article disclosed by modified Gimkiewicz to have perforations on a tipping material/paper as disclosed by Beard, as both are directed to a smoking article/cigarette, where one ordinarily skilled in the art could reasonably add perforations to the tipping paper as disclosed by Beard, to a similar smoking article disclosed by modified Gimkiewicz, to predictably yield a modified smoking article capable of generating an aerosol and also have an encoded information pattern applied to said smoking article via perforations.
Regarding Claim 15, Modified Gimkiewicz discloses that the perforations are formed through the tipping paper and outer wrapper paper (Beard, [0028]). Modified Gimkiewicz does not explicitly disclose the following:
the perforations are positioned in an area of a hollow tubular element
the hollow tubular element is non-perforated at the location of the perforations.
Regarding (I), it should be noted that rearrangement of parts without modifying the operation of the device is held to be an obvious matter of design choice that gives predictable results (see MPEP § 2144.04.VI.C). Modified Gimkiewicz discloses that the perforations are located on the tipping paper and generally in the filter and/or hollow tubular element (Beard, see Figs. 1-2; [0028]).
Therefore, one ordinarily skilled in the art could reasonably rearrange the perforations to be specifically located around the hollow tubular segment portion of the smoking article, so long as the perforations is still positioned around the overall filter element as disclosed by Bear, and is detectable by a sensing module (i.e., is machine-readable).
Regarding (II), Modified Gimkiewicz discloses that the tipping material/paper are provided with a series of perforations (30) that extend through the tipping material and plug wrap (i.e., outer wrapper) (Beard, [0028]). Modified Gimkiewicz does not explicitly disclose that the perforations extend beyond the paper wrappings, which implies that said perforations will not extend through the hollow tubular element (i.e., element is non-perforated).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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