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 1-15 are pending and are subject to this Office Action. Claim 1 has been amended. Claims 9-15 are withdrawn.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 2/19/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 2/19/2026 have been fully considered but they are not persuasive.
On page 6, the Applicant argues that Duke does not teach or suggest a dispersion medium that comprises water, monovalent alcohols, polyvalent alcohols, sugar alcohols, sugars, and/or polyvalent alcohol esters. The Examiner does not find this to be persuasive because Duke teaches that the thread may be wetted with water prior to contacting the tobacco [0013], and as such the water may define the dispersion medium.
On pages 7-8, the Applicant argues that Duke, Rogers, and Jeong neither along nor in combination teach the claim 2 language “the inner lateral area is at least in part coated with the tobacco product”. First, the Applicant argues that there is no motivation as to why a person of ordinary skill in the art would add a through-hole to the filter 4 of Duke, only to then add a thread 10 to the through-hole. The Examiner does not find this to be persuasive. Duke teaches plug of filter material may comprise any suitable filter media [0016] and filters with through-holes are commonly known in the art, as taught by Jeong which teaches using filters with a hollow portion or without a hollow portion [0061]. As such it would be obvious to one of ordinary skill in the art to substitute the filter of Duke with a filter with a hollow portion as taught by Jeong as this merely involves simple substitution of one known filter element for another to yield predictable results. Further, Jeong teaches the filter with a hollow portion generates an airflow [0061], and as Duke teaches the thread disposed in close proximity with the path of gaseous flow allows it to affect various characteristics of the gaseous flow [0050], one of ordinary skill would be motivated to modify the filter of Duke to have a hollow portion for the advantage of generating an airflow and thereby the thread would be further disposed in the path of gaseous flow.
Next, the Applicant argues that it has not been shown that “to dispose the thread within the hollow of the filter of modified Duke” meets the claim 2 language that recites providing an inner lateral area that is at least in part coated with particulate tobacco 11 and a thread 10. The Examiner does not find this to be persuasive. As the thread with particulate tobacco is located within the hollow of the filter, it is on and covers at least some part of the outer surface of the inner lateral area. Therefore, it is considered to coat some part of the inner lateral area, defining where the inner lateral area is “at least in part coated with the tobacco product”.
On pages 9-10, the Applicant argues Duke, Rogers, and Jeong neither along or in combination teach the claim language “the tobacco product is arranged in the inner volume of the filter rod”. The Examiner does not find this to be persuasive for the same reasons given with claim 2, as discussed previously.
The following is a modified rejection made based on amendments made to the claims.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duke (US2011/0220134, cited previously) in view of Rogers (US2017/0157106, cited previously) and Jeong (WO2020/153830, citations will refer to the English equivalent US2023/0354884).
Regarding claim 1, Duke discloses:
A smoking article (2) comprising a cylindrical shape (figure 1) with a longitudinal axis running through respective base areas of a distal end (end of rod 6) and a mouth end (end of filter 4) of the smoking article ([0041], figure 1).
Wherein the smoking article comprises segments that are at least in part wrapped in a circumferential wrapper (cylindrically paper-wrapped rod 6 and tipping paper 8, [0041]).
The segments being arranged in order from the distal end to the mouth end as follows: a tobacco segment comprising tobacco or tobacco derived smokable material (rod of tobacco 6); a cooling segment having a first flow path from the tobacco segment (figure 3, third filter element 14) to a filter segment (filter element 12 and 16, figure 3), the filter segment comprising a second flow path from the cooling segment to the mouth end (as shown in figure 3).
Wherein the filter segment comprises a tobacco product comprising tobacco particles (particulate tobacco 11, [0045]) and a dispersion medium for dispersing the tobacco particles, wherein the dispersion medium comprises water, monovalent alcohols, polyvalent alcohols, sugar alcohols, sugars, and/or polyvalent alcohol esters (water that adheres the tobacco to the thread [0013], and therefore dispersing the tobacco particles along the thread).
The at least one particle of tobacco adhered to the thread may comprise shredded tobacco, powdered tobacco, tobacco fibres, tobacco sheet and/or reconstituted tobacco ([0009]).
Duke does not appear to disclose (I) the average particle size of the tobacco particles and (II) wherein at least one part of the filter segment comprises a hollow cylinder shape having an inner lateral area.
In regard to (I), Rogers teaches tobacco material in the form of shredded, ground, granulated, or powdered form. The tobacco material may have an average particle size of less than about 50 microns ([0085]).
Therefore, it would be obvious to one having ordinary skill in the art to make the particulate tobacco of Duke be less than about 50 microns as taught by Rogers because the selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07. The range taught by the prior art overlaps the special technical feature range and is therefore prima facie obvious.
In regard to (II), Jeong, directed to an aerosol generating system, teaches:
A smoking article (50, figure 1) comprising a tobacco segment (cartridge 56 comprising tobacco filler 58, [0043]), a cooling segment (paper tube 54), and a filter segment (filter 52, [0044]).
The filter may have a hollow portion for generating an airflow, but a filter with no hollow portion may also be used [0061].
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the filter of Duke by incorporating a hollow portion as taught by Jeong, and thus wherein at least one part of the filter segment comprises a hollow cylinder shape having an inner lateral area, because both Duke and Jeong are directed to smoking articles with filter segments, Jeong teaches the hollow portion is for generating an airflow, and this merely involves simple substitution of one known type of filter (i.e. a filter with no hollow portion) for another known type of filter (i.e. a filter with a hollow portion) to a similar smoking article to yield predictable results.
Regarding claim 2, modified Duke further teaches:
The hollow cylinder shape having the inner lateral area encloses a through-hole which the second flow path is arranged (as the hollow portion of the filter generates an airflow, [0061] of Jeong).
Wherein the second flow path is parallel to the longitudinal axis (as the gaseous flow moves through the filter 4 to reach the smoker’s mouth [0050] and is therefore parallel to the longitudinal axis).
As Duke further teaches that the thread 10 extends through an inner portion of the filter material [0005] and is disposed in close proximity with the path of the gaseous flow as it moves through the filter [0050], it would be obvious to one having ordinary skill in the art to dispose the thread within the hollow of the filter of modified Duke, and thus the inner lateral area is at least in part coated with the tobacco product.
Regarding claim 3, Duke further teaches the tobacco may be adhered to the thread by contacting the thread with a solution comprising the tobacco particles and the slurry may further comprise a suitable bonding agent [0014]. Therefore it would be obvious for one having ordinary skill in the art to have the tobacco adhered to the thread with water and a bonding agent as it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose. See MPEP § 2144.06.I.
As such the bonding agent on the thread would be arranged between the inner lateral area and, at least in part, of the tobacco product.
Regarding claim 4, modified Duke further teaches wherein at least one part of the filter segment is a filter rod having an inner volume (hollow of the filter). As Duke further teaches that the thread 10 extends through an inner portion of the filter material [0005] and is disposed in close proximity with the path of the gaseous flow as it moves through the filter [0050], it would be obvious to one having ordinary skill in the art to dispose the thread within the hollow of the filter of modified Duke, and thus wherein the tobacco product is arranged in the inner volume of the filter rod.
Regarding claim 5, modified Duke further teaches wherein the tobacco product is uniformly distributed (as the tobacco may cover substantially all of the outer surface of the thread [0011] and the thread extends longitudinally through the plug of filter material [0029], figure 3) within a first cylindrically shaped section of the filter rod (filter element 12, [0042]) and the first cylindrically shaped section has a diameter equal to a diameter of the filter rod (as shown in figure 3).
Regarding claim 6, Duke further teaches wherein a second cylindrically shaped section of the filter rod not comprising the tobacco product (filter element 16) has a diameter equal to the diameter of the filter rod (substantially similar diameters [0024]) and the second cylindrically shaped section is arranged between the first section and the mouth end of the smoking article (figure 3).
Regarding claim 7, modified Duke further teaches wherein at least one part of the filter segment is a filter rod having an inner volume (hollow of the filter) and wherein the first cylindrically shaped section has a diameter equal to a diameter the filter rod (figure 3, substantially similar diameters [0024]).
As Duke further teaches that the thread 10 extends through an inner portion of the filter material [0005] and is disposed in close proximity with the path of the gaseous flow as it moves through the filter [0050], it would be obvious to one having ordinary skill in the art to dispose the thread within the hollow of the filter of modified Duke, and thus wherein at least one thread comprising the tobacco product is arranged in the inner volume of a first cylindrically shaped section of the filter rod.
Regarding claim 8, Duke further teaches wherein a second cylindrically shaped section of the filter rod not comprising the thread (filter element 16) and having a diameter equal to the diameter of the filter rod (substantially similar diameters [0024]) is arranged between the first section and the mouth end of the smoking article (figure 3).
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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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