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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/17/26 has been entered.
Status of the Claims
Claims 1, 3, and 5-13 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 2/17/26.
Claim 1 is amended.
Response to Arguments
Applicant's arguments (filed 2/17/26, pages 5-10) with respect to the rejection of Claim 1 as amended under 35 U.S.C. 103 in view of Kawasaki and Banks have been fully considered. Applicant argues: (1) the unexpectedly superior results provided by the claimed invention support patentability and would rebut any prima facie case of obviousness that could be established based on Kawasaki, Banks, and Jeoung; (2) Kawasaki and Banks do not teach the coating concentration of the alkaline metal chloride, much less the claimed coating concentration; and (3) the Examiner's position is based on improper hindsight.
Regarding (1), Applicant alleges unexpected results based on evidence presented in Applicant’s Specification, predominately Table 1. The question as to whether unexpected advantage has been demonstrated is a factual question. In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984). Thus, it is incumbent upon applicant to supply the factual basis to rebut the prima facie case of obviousness established by the examiner. See, e.g., In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). Here, Applicant has not provided adequate data and a corresponding explanation regarding a factual showing in the Specification of unexpected results. Specifically, the data presented in Table 1 is not commensurate in scope with the rejected claims for the following reasons: (1) amended Claim 1 is directed towards alkaline metal chlorides but Table 1 only demonstrates results of coatings comprising sodium chloride, and (2) the claimed range is not supported where the data is not inclusive of coatings with compositions of sodium chloride between the range end points of 9% and 15% and/or greater than the range upper bound of 15%. Thus, applicant has not satisfied its burden of demonstrating the criticality of the claimed range.
Regarding (2), Applicant’s arguments are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Rozim (US 20050161055 A1).
Regarding (3), Applicant’s arguments are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The following rejections are modified where necessary based on Applicant’s amendments.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant argued (Arguments filed 2/17/26, pages 5-6) that the Specification demonstrates the claimed range of alkaline metal chloride in amended Claim 1. Specifically, Claim 1 was amended to include “the filter is coated with 9% to 15% of the alkaline metal chloride” (emphasis added) and the Applicant cited Examples 3 and 6 (Specification, page 9) as support for the amendment. However, Examples 3 and 6 are directed to “an inner portion coated with 9% of sodium chloride” and “an inner portion coated with 15% of sodium chloride” respectively (emphasis added). Applicant’s amendment to Claim 1 regarding alkaline metal chloride is broader than the disclosed coating of the Specification which only provides experimental results for sodium chloride and/or the Specification does not provide a description of a coating layer that would have the claimed concentration of the broader category of alkaline metal chlorides. Therefore, Applicant’s amendment is unsupported by the Specification.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1, 3, and 5-13 are 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. Specifically, Claim 1 is indefinite for reciting “the surface of the hollow inside the filter is coated with 9% to 15% of the alkaline metal chloride” because the quantity of alkaline metal chloride is unclear. Specifically, it is unclear whether: the coating layer of Claim 1 comprises 9-15% by weight of an alkaline metal chloride, 9-15% of the alkaline metal chloride of the coating layer is specifically on the surface of the hollow filter, or whether 9-15% of the alkaline metal chloride is separate from the coating layer which is also formed on a surface of the hollow. The specification similarly states “a paper tube filter having an inner portion coated with 9% of sodium chloride was used as the hollow filter.” (Specification, page 9, lines 12-13). However, Applicant’s arguments state “the coating concentration of the alkaline metal chloride is in the range of 9% to 15%” (Argument’s filed 2/17/26, page 5). Therefore, for purposes of examination, the claim or phrase will be interpreted as: “the coating layer comprises 9% to 15% by basis weight of the alkaline metal chloride.”
Claims 3 and 5-13 are also rejected by virtue of their dependency on claim 1.
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 (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.
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, 3, 5, and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki (US 20240023600 A1) in view of Rozim (US 20050161055 A1).
Regarding Claim 1, Kawasaki discloses a cooling filter (The mouthpiece segment may include the cooling segment. [0132]) comprising:
a filter having a tubular shape with a hollow formed inside (cooling segment 23, [0132]), and
a coating layer formed on a surface of the hollow ("By coating the inner surface of the paper tube… the cooling effect can be also enhanced by utilizing heat of solution associated with the heat absorption by the coating or a phase change of the coating." [0133]),
Kawasaki also discloses that “the cooling effect can be also enhanced by utilizing heat of solution associated with the heat absorption by the coating or a phase change of the coating.” ([0133]). Kawasaki does not explicitly disclose wherein the coating layer has a basis weight of 1% to 30% of a basis weight of the filter and the surface of the hollow inside the filter is coated with 9% to 15% of the alkaline metal chloride.
Rozim teaches a smoking filter wherein filter elements may comprise sodium chloride to further cool inhalable smoke (“sodium chloride solution increases the filtering effect not only by increasing the surface area, but also by forming a crystallized film capable of dissolving and crystallizing again and again. The crystalline sodium chloride becomes a good adsorbent when it gets into contact with the hot and moistureous cigarette smoke… At the time the hot and moistureous smoke leaves the filter, the slightly heated sodium chloride cools down and crystallizes, adsorbing thereby the tar and nicotine therein. At every new puff the adsorption is repeated” [0016]). Rozim also teaches that a sodium chloride solution may be used to saturate a fibrous filter with sodium chloride by utilizing a solution of 20-40% ([0010]) but does not explicitly disclose wherein a surface of a hollow filter is coated with a 9% to 15% solution of alkaline metal chloride.
While, Kawasaki and Rozim do not explicitly disclose wherein the coating layer has a basis weight of 1% to 30% of a basis weight of the filter or that the coating layer comprises 9% to 15% by basis weight of the alkaline metal chloride, given that the basis weight of the coating directly effects the cooling effect of the filter as taught by Kawasaki ([0133], [0140]) and the presence and quantity of sodium chloride crystals effects the cooling and filtering capabilities as taught by Rozim ([0014]-[0016]), a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of the basis weight of the coating layer and quantity of sodium chloride therein. It follows that, a person having ordinary skill in the art, through routine optimization of the coating layer as disclosed in Kawasaki and Rozim, would arrive at the basis weight of the coating layer and the basis weight of an alkaline metal chloride such as sodium chloride as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the coating of the filter of Kawasaki with a cooling component such as sodium chloride as taught by Rozim because Kawasaki and Rozim are both directed to smoking cooling filters, Rozim teaches the use of sodium chloride as a cooling component in smoking filters, and this merely involves applying a known component to a similar cooling filter to yield predictable results.
Regarding Claim 3, Rozim discloses a cooling filter wherein the alkaline metal chloride is sodium chloride ([0016]).
Regarding Claim 5, Kawasaki further discloses a cooling filter wherein the coating layer further comprises one or more kinds selected from the group consisting of cellulose, a cellulose derivative, an alcohol resin, and sugars (The cooling segment coating may be a polymer coating comprising an alcohol resin of polyvinyl alcohol or a polysaccharide coating such as pectin. [0133], [0140]).
Regarding Claim 7, Kawasaki further discloses a cooling filter wherein the alcohol resin is polyvinyl alcohol ("By coating paper, which is used as the material of the cooling sheet, with a polymer coating such as polyvinyl alcohol… the cooling effect can be also enhanced by utilizing heat of solution associated with the heat absorption by the coating or a phase change of the coating." [0140]).
Regarding Claim 8, Kawasaki discloses the article as discussed above in Claim 5 but does not explicitly disclose wherein the cellulose, cellulose derivative, alcohol resin, or sugars is coated in a content of 0.1% to 15% of a basis weight of the filter. However, given that the composition of the coating layer directly effects the cooling capabilities of the coating layer and cooling element ([0140]), a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have a reasonable expectation of success through experimentation of determining a preferred user range of basis weight of cellulose, cellulose derivative, alcohol resin, and/or sugars. Therefore, it follows that a person having ordinary skill in the art, through routine optimization of the coating layer as disclosed in Kawasaki, would arrive at the basis weight of components as claimed, absent evidence to the contrary. See MPEP 2144.05(II).
Regarding Claim 9, Kawasaki further discloses a cooling filter wherein the filter comprises one or more materials selected from a group consisting of paper, a polymer, and cellulose acetate ("the cooling segment may be a paper tube" [0133], Fig 3).
Regarding Claim 10, Kawasaki further discloses a cooling filter wherein
the cooling filter has a length of 5 millimeters (mm) or more ("The cooling segment 23 can be formed into a rod shape whose length in the airflow direction is, for example, 10-40 mm" [0150], Fig 3) and
a circumference of 14 to 27 mm ("the cross-sectional shape of the cooling segment 23 in the airflow direction is a substantially circular shape, and its diameter can be 5.5-8.0 mm" [0151], Fig 3).
Regarding Claim 11, Kawasaki further discloses a cooling filter wherein the cooling filter has a draw resistance of 0.1 to 3.5 mm H2O per millimeter ("the airflow resistance of the cooling segment 23 is, for example, 0-30 mmH2O" [0145], Fig 3. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. See MPEP § 2144.05(I)).
Regarding Claim 12, Kawasaki discloses a smoking article (Non-combustion-heating-type flavor inhalation article. [0072], Fig 3) comprising:
a smoking material portion (flavor-generating segment 21. [0072], Fig 3);
a cooling portion comprising the cooling filter of claim 1 positioned downstream of the smoking material portion (The mouthpiece segment may include the cooling segment. [0132]. See Claim 1); and
a mouthpiece portion positioned downstream of the cooling portion (Filter segment 24 of mouthpiece segment 22. [0072], Fig 3).
Regarding Claim 13, Kawasaki further discloses a smoking article wherein the smoking article is heating type tobacco and is in the form of a cigarette ("The non-combustion-heating-type tobacco 2 has a rod-like shape, particularly a cylindrical shape, and the longitudinal direction of the non-combustion-heating-type tobacco 2 matches the airflow direction." [0072], Fig 3).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kawasaki and Rozim as applied to Claim 5 above, and further in view of Jeoung (US 20210251281 A1).
Regarding Claim 6, Kawasaki discloses wherein the cooling segment coating may be a polymer coating comprising an alcohol resin of polyvinyl alcohol or a polysaccharide coating such as pectin ([0133], [0140]). Kawasaki does not explicitly disclose wherein the coating may consist of one of the specific cellulose derivatives claimed in Claim 6.
However, Jeoung teaches a cooling segment wherein the cooling segment is coated in the cellulose derivative hydroxypropyl methylcellulose ("as the coating material coating the surface of the cooling material 630, shellac, hyroxypropyl (sic) methylcellulose (HPMC), corn starch, or a combination thereof may be used" [0094])
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the coating layer of Kawasaki with the inclusion of a specific cellulose derivative of hydroxypropyl methylcellulose as taught by Jeoung because Kawasaki, Rozim, and Jeoung are all directed to smoking filters, Jeoung teaches the use of the cellulose derivative hydroxypropyl methylcellulose in the coating of a cooling element, and this merely involves applying a known cellulose derivative compound to a similar coating layer on a cooling filter to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755