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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/22/26 has been entered.
Status of the Claims
Claims 1 and 2-15 are pending and are subject to this Office Action.
Claims 9-15 are withdrawn.
Claims 1 and 3 are amended.
Claim 2 is cancelled.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 7/22/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 7/22/2026, with respect to the rejection(s) of claim(s) 1-8 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously applied art and newly found art.
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 and 2-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duke (US2011/0220134, cited previously) in view of Charlton (US 5,662,126) and Rogers (US2017/0157106, cited previously).
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]).
Wherein at least one part of the filter segment comprises a hollow cylinder shape having an inner lateral area (inner surface of filter segment 12 that surrounds thread 10, fig. 3), wherein the hollow cylinder shape having the inner lateral area encloses a through-hole through which the second flow path is arranged (space of filter segment 12 that thread 10 occupies, fig. 3).
Wherein the second flow path is parallel to the longitudinal axis (fig. 3).
Duke does not appear to disclose (I) a dispersion medium for dispersing the tobacco particles, wherein the inner lateral area is coated with the tobacco product, and (II) the tobacco particles having an average particle size of 30 um.
In regard to (I) Charlton, directed to a filter for a smoking article, teaches:
A filter having a longitudinal axis and a tube that is pre-coated with particulate smoke modifying additive through the longitudinal axis (Abstract).
Suitable particulate additives include flavourants and other solid additives and mixtures thereof (Col. 1, lines 14-19). As Duke is directed to tobacco particles as a flavourant (see [0004] of Duke), Charlton is considered to be analogous art.
A strip of plug wrap 2 that is coated with the particles 4 (fig. 3, Col. 4, lines 13-18). The plug wrap coated with the particles defining a flavorant product having a dispersion medium (i.e. plug wrap) for dispersing the particles.
An inner lateral area of the filter segment is coated with the flavorant product (where the tube is itself to be surrounded by an outer annular body, the latter may be similarly continuously fed and formed around the advancing wrapped core; Col. 2, lines 36-40; and therefore the tube with the particles coats an inner lateral area of the outer annular body).
This allows incorporation of other particulate additives in tobacco smoke filters with ready achievement of uniform additive loading (Col. 3, lines 13-17).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to incorporate to the tobacco product of Duke a strip of plug wrap coated with particles to disperse particulate additive flavourants through the filter as taught by Charlton, because both Duke and Charlton are directed to filters for smoking articles with particulate additive flavorants, Charlton teaches this achieves uniform additive loading, and this merely involves incorporation of a known technique of applying particulate flavorants to a smoking filter to a known smoking filter to yield predictable results.
In regard to (II), Duke further teaches 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 is silent to the average particle size of the tobacco particles.
However Rogers, directed to tobacco material in the form of a particulate (see [0085]), 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, before the effective filing date of the claimed invention, 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.
Regarding claim 3, modified Duke teaches wherein a bonding agent is arranged between the inner lateral area and the tobacco product (Charlton, the particulate additive is suitably adhered to said strip(s) by hot melt adhesive, high m.p. polyethylene glycol, or emulsion-type adhesive such as PVA, Col. 1, lines 47-49).
Regarding claim 4, modified Duke further teaches wherein at least one part of the filter segment is a filter rod having an inner volume, wherein the tobacco product is arranged in the inner volume of the filter rod (space of filter segment 12 that thread 10 occupies, fig. 3).
Regarding claim 5, modified Duke further teaches wherein the tobacco product is uniformly distributed (Charlton, achievement of uniform additive loading, Col. 3, lines 13-17) within a first cylindrically shaped section of the filter rod (Duke, filter element 12, [0042]) and the first cylindrically shaped section has a diameter equal to a diameter of the filter rod (Duke, fig. 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 (fig. 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 (space of filter segment 12 that thread 10 occupies, fig. 3) and wherein the first cylindrically shaped section has a diameter equal to a diameter the filter rod (figure 3, substantially similar diameters [0024]).
Charlton further teaches another possibility is for additive particles to be first adhered to threads, with the coated threads then being adhered to the strip(s) (Col. 1, lines 39-42), and with this embodiment modified Duke would have at least one thread comprising the tobacco product is arranged in the inner volume of a first cylindrically shaped section of the filter rod (coated threads of Charlton within the space occupied by thread 10 of Duke).
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
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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