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
Claims 1-16 are pending.
Claims 7, 11, 14 and 15 have been remain withdrawn.
Claim 16 is new.
Claims 1, 5, 6, 7, 11, 14 and 15 have been amended.
Response to Arguments
Applicant's arguments filed 12/2/2025 have been fully considered but they are not persuasive.
Regarding the argument that the Examiner refers to the cooling segment 107 as being a cylindrically shaped paper tube, however, England discloses that the cooling segment 107 is a recess created from "the stiff plug wrap or tipping paper," which forms a wrapper of the smoking article and therefore there is no cooling segment "at least in part wrapped in a circumferential wrapper" having "an outer surface with an outer lateral area", the Examiner respectfully disagrees. England expressly teaches that cooling segment 107 is a cylindrically shaped paper tube and is not a recess. England states, “the cooling segment 107 is manufactured from a spirally wound paper tube which provides a hollow internal chamber yet maintains mechanical rigidity. Spirally wound paper tubes are able to meet the tight dimensional accuracy requirements of high-speed manufacturing processes with respect to tube length, outer diameter, roundness and straightness,” ([0029]).
Regarding the argument that the feature recited in claim 5 is not simply an invitation to experiment by varying the layer thickness from one smoking article to the next but instead requires that the pattern applied to the surface of the cooler material in the smoking article has a varying layer thickness, the Examiner respectfully disagrees. Modified England teaches that the coating pattern of tobacco product (Reynolds, col. 4, lines 1-15) includes a varying layer thickness of the tobacco product on the surface, specifically no thickness where the tobacco product is not applied and a thickness of tobacco product where the tobacco product is applied, which results in a varying layer thickness of the tobacco product on the surface.
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.
Claim(s) 1, 2, 6, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over England (US 20190116875) in view of Chida (EP2957183) and further in view of Lord (WO 2020089053).
Regarding claims 1, 2 and 6, England teaches a smoking article (101) comprising a cylindrical shape (Fig. 1) with a longitudinal axis running through respective base areas of a distal end (115) and a mouth end (113) of the smoking article (101),
wherein the smoking article (101) comprises the following segments, which are arranged subsequently in the following order from the distal to the mouth end, and are at least in part wrapped in a circumferential wrapper, specifically tipping paper ([0025]):
A tobacco segment (103) comprising tobacco or tobacco derived smokable material ([0021]),
A cooling segment (107) comprising a hollow cylindrically shaped cooler material having a through-hole and having an inner surface with an inner lateral area and an outer surface with an outer lateral area, specifically a paper tube ([0029]), defining a first flow path from the tobacco segment (103) to a filter segment (109), wherein the first flow path is also parallel to the longitudinal axis (Fig. 1),
the filter segment (109) comprising a second flow path from the cooling segment (107) to the mouth end (113).
England does not expressly teach that a surface of the cooler material is at least in part coated with a tobacco product comprising tobacco particles having an average particle size of 30 micron and a dispersion medium for dispersing the tobacco particles.
Chida teaches a smoking article comprising a tobacco product that includes tobacco particles having an average particle size of 30 um and a dispersion medium for dispersing the tobacco particles [0015]. The tobacco product is sprayed (coated) onto a smoking article such as a cigarette [0044, 0046] so that the smoking flavor in the tobacco particles can be uniformly imparted to the smoking article [0047]. Chida teaches that the tobacco product is sprayed onto the surface of a cigarette, specifically the tipping paper, which includes the surface of the tobacco rod segment and the surface of the cooling segment. It would have been obvious to one of ordinary skill in the art to spray onto the cigarette paper (tipping paper) of England a tobacco product comprising tobacco particles having an average particle size of 30 um and a dispersion medium for dispersing the tobacco particles, to provide a smoking flavor that emerges evenly to the user as suggested by Chida ([0015]).
Modified England does not expressly teach that at least the inner lateral area of the inner surface of the cooler material is at least in part coated with the tobacco product (12).
Lord teaches an aerosol forming article comprising an aerosol forming segment (2) and a cooling segment (6) for use in a smoking substitute system (abstract and page 1, lines 2-3). Lord teaches that the inner lateral area of the cooling segment is coated with a flavorant (13) to impart a flavor to the aerosol/vapor prior to the terminal filter element for inhalation by the user (page 11, lines 4-5). It would have been obvious to one of ordinary skill in the art to have applied the tobacco product of modified England to the inner lateral area of the cooling segment of modified England to impart a flavor to the aerosol/vapor prior to the terminal filter element for inhalation by the user (Lord, page 11, lines 4-5) as suggested by Lord.
Regarding claims 8 and 9, modified England teaches that the cooling segment (307) comprises ventilation holes (317), but does not expressly teach that the tobacco product (303) is only arranged downstream of the ventilation holes (317) or only arranged upstream of the ventilation holes (317).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the location of the ventilation holes with respect to the tobacco product since it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed location of the ventilation holes with respect to the tobacco product is critical and has unexpected results. In the present invention, one would have been motivated to optimize the location of the ventilation holes with respect to the tobacco product motivated by the desire to provide effective cooling to the article (England, [0046]).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over England in view of Chida in view of Lord as applied to claim 1 above, and further in view of Reynolds (US3006347).
Regarding claims 3 and 4, modified England does not expressly teach that the tobacco product is applied to the surface in the claimed ring pattern.
Reynolds teaches a smoking article wrapper with a flavorant coating, wherein the coating is provided in any desired spaced pattern, including a plurality of streaks applied circumferentially to the wrapper (col. 4, lines 1-15). It would have been obvious to one of ordinary skill in the art to optimize the coating pattern of the tobacco product on the wrapper of modified England as a matter of routine experimentation to achieve full control of flavorant distribution (Reynolds, col. 1, lines 25-30).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over England in view of Chida and further in view of Reynolds (US 3006347).
Regarding claim 5, England teaches a smoking article (101) comprising a cylindrical shape (Fig. 1) with a longitudinal axis running through respective base areas of a distal end (115) and a mouth end (113) of the smoking article (101),
wherein the smoking article (101) comprises the following segments, which are arranged subsequently in the following order from the distal to the mouth end, and are at least in part wrapped in a circumferential wrapper, specifically tipping paper ([0025]):
A tobacco segment (103) comprising tobacco or tobacco derived smokable material ([0021]),
A cooling segment (107) comprising a cylindrically shaped cooler material, specifically a paper tube ([0029]) having a first flow path from the tobacco segment (103) to a filter segment (109),
the filter segment (109) comprising a second flow path from the cooling segment (107) to the mouth end (113),
England does not expressly teach that a surface of the cooler material is at least in part coated with a tobacco product comprising tobacco particles having an average particle size of 30 micron and a dispersion medium for dispersing the tobacco particles.
Chida teaches a smoking article comprising a tobacco product that includes tobacco particles having an average particle size of 30 um and a dispersion medium for dispersing the tobacco particles [0015]. The tobacco product is sprayed (coated) onto a smoking article such as a cigarette [0044, 0046] so that the smoking flavor in the tobacco particles can be uniformly imparted to the smoking article [0047]. Chida teaches that the tobacco product is sprayed onto the surface of a cigarette, specifically the tipping paper, which includes the surface of the tobacco rod segment and the surface of the cooling segment. It would have been obvious to one of ordinary skill in the art to spray onto the cigarette paper (tipping paper) of England a tobacco product comprising tobacco particles having an average particle size of 30 um and a dispersion medium for dispersing the tobacco particles, to provide a smoking flavor that emerges evenly to the user as suggested by Chida ([0015]).
Modified England does not expressly teach that the tobacco product is applied to the surface in the claimed ring pattern.
Reynolds teaches a smoking article wrapper with a flavorant coating, wherein the coating is provided in any desired spaced pattern, including a plurality of streaks applied circumferentially to the wrapper (col. 4, lines 1-15). It would have been obvious to one of ordinary skill in the art to optimize the coating pattern of the tobacco product on the wrapper of modified England as a matter of routine experimentation to achieve full control of flavorant distribution (Reynolds, col. 1, lines 25-30).
Modified England teaches that the coating pattern of tobacco product (Reynolds, col. 4, lines 1-15) includes a varying layer thickness of the tobacco product on the surface, specifically no thickness where the tobacco product is not applied and a thickness of tobacco product where the tobacco product is applied, which results in a varying layer thickness of the tobacco product on the surface.
Claim(s) 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over England in view of Chida and further in view of Lord as applied to claim 6 above, and further in view of Besso (US 20160302477).
Regarding claims 10 and 12, modified England does not expressly teach that the cooling segment comprises a flow diverter.
Besso teaches a smoking article comprising a tobacco rod and a filter connected to the tobacco rod (abstract). Besso teaches including a flow restrictor element in the cavity of a hollow tube segment to divert the flow of air and smoke towards the periphery of the hollow tube ([0030]) and thereby advantageously increases the RTD to a level that is acceptable to a consumer ([0029]). Besso teaches that the flow diverter is a sphere which is inserted into the hollow tube during manufacture ([0041]), which reads on the flow diverter being “a loose element” or an independent element. It would have been obvious to one of ordinary skill in the art to have included a flow diverter in the hollow tube, or cooling segment, of modified England to divert the flow of air and smoke towards the periphery of the hollow tube ([0030]) and thereby advantageously increases the RTD to a level that is acceptable to a consumer ([0029]) as suggested by Besso.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over England in view of Chida in view of Lord as applied to claim 1, above, and further in view of Jung (WO2020080783).
US 20210127741 is applied to translate WO2020080783. All citations to ‘Jung’ refer to US 20210127741.
Regarding claim 13, modified England does not expressly teach that the cooling segment comprises multiple parallel first flow-paths each being circumferentially enclosed by a respective part of the surface of the cooling segment.
Jung teaches an aerosol generating article that includes a tobacco rod, a cooling segment and a filter section (abstract and [0041]). Jung teaches that the cooling segment may include multiple parallel first flow-paths (Fig. 3A and [0059]) each being circumferentially enclosed by a respective part of the surface of the cooling segment (Fig. 3A). It would have been obvious to one of ordinary skill in the art to have included multiple parallel first flow-paths in the cooling segment of modified England to increase a surface area per unit area (that is, a surface area in contact with aerosol) ([0059]) as suggested by Jung.
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the tobacco product to the multiple parallel first flow-paths to impart a flavor to the aerosol/vapor prior to the terminal filter element for inhalation by the user (Lord, page 11, lines 4-5) as suggested by Lord. The courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04 VI B).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over England in view of Chida in view of Reynolds as applied to claim 5, above, and further in view of Lord.
Regarding claim 16, modified England does not expressly teach that the varying layer thickness of the tobacco product increases along the first flow path from the tobacco segment to the filter segment.
Lord teaches an aerosol forming article comprising an aerosol forming segment (2) and a cooling segment (6) for use in a smoking substitute system (abstract and page 1, lines 2-3). Lord teaches that the inner lateral area of the cooling segment is coated with a flavorant (13) to impart a flavor to the aerosol/vapor prior to the terminal filter element for inhalation by the user (page 11, lines 4-5). Lord states that the flavourant may be evenly dispersed on or in the spacer element or may be provided in isolated locations and/or varying concentrations throughout the spacer (Lord, page 8, lines 9-12). It would have been obvious to one of ordinary skill in the art to have applied the tobacco product of modified England to the inner lateral area of the cooling segment of modified England to impart a flavor to the aerosol/vapor prior to the terminal filter element for inhalation by the user (Lord, page 11, lines 4-5) as suggested by Lord.
As modified England teaches that the tobacco product may be evenly dispersed, provided in isolated locations and/or varying concentrations throughout the cooling segment (Lord, page 8, lines 9-12), this establishes the application of the tobacco product as a result effective variable which it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize. It has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed varying layer of thickness of tobacco product is critical and has unexpected results. In the present invention, one would have been motivated to optimize the variable thickness of the tobacco product motivated by the desire to vary the concentration of the tobacco product throughout the cooling segment.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18031196 in view of Chida.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, the reference application teaches all of the limitations of claim 1 in claims 1 and 7 of the reference application, except for the limitation stating that the surface of the cooler material is coated with the tobacco product.
Chida teaches a smoking article comprising a tobacco product that includes tobacco particles having an average particle size of 30 um and a dispersion medium for dispersing the tobacco particles [0015]. The tobacco product is sprayed (coated) onto a smoking article such as a cigarette [0044, 0046] so that the smoking flavor in the tobacco particles can be uniformly imparted to the smoking article [0047]. Chida teaches that the tobacco product is sprayed onto the surface of a cigarette, specifically the tipping paper, which includes the surface of the tobacco rod segment and the surface of the cooling segment. It would have been obvious to one of ordinary skill in the art to spray onto the surface of the cooler material of claims 1 and 7 of the reference application the tobacco product comprising tobacco particles having an average particle size of 30 um and a dispersion medium for dispersing the tobacco particles, to provide a smoking flavor that emerges evenly to the user as suggested by Chida ([0015]).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755