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 16-23, 25-30 are pending and are subject to this office action. Claim 16 has been amended. Claim 24 has been cancelled.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 06/03/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pg. 7-11, filed 06/03/2026, with respect to the rejection claim 16 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claim 16 to require that the rod of aerosol generating substrate has a resistance to draw between 4 and 10 mmWG as previously recited in claim 24, and that the aerosol generating article has a ventilation level of 15 to 70%. Hwang is silent to the resistance to draw of the tobacco rod (31, “rod of aerosol generating substrate”) and ventilation level of the cigarette (3, “aerosol generating article”, Fig. 4). Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of previously applied prior art.
On pg. 9, Applicant argues that claimed distance between the ventilation zone and upstream end of the upstream element could not be derived from the disclosure of Hwang because Hwang does not disclose varying or optimizing the claimed distance. The Examiner disagrees. A person having ordinary skill in the art, in view of the disclosed cigarette length and position of the perforations relative to the downstream end of the article, could have reasonably arrived at a cigarette where the distance between the upstream end of the front end plug (33, i.e. upstream end of the cigarette) and the perforations (36) is in a range that overlaps with the claimed range of 26-33mm. A teaching or suggestion to select the claimed distance of 26-33mm is not required because where the claimed ranges overlap with the range taught by the prior art prima facie obviousness exists (see MPEP § 2144.05).
On pg. 9-10, Applicant argues that Hwang teaches away from the tobacco rod having a resistance to draw of 4-10 mmWG, as required by the amendments to claim 16. Hwang is silent to the resistance to draw of the tobacco rod. While Hwang discloses perforations may be added to compensate for an increase in draw resistance for the front end plug ([0093-0095]), Hwang does not disclose this relationship has an impact on the selection of draw resistance for the tobacco rod or prevents a person of ordinary skill in the art from selecting a tobacco rod with a resistance to draw in the claimed range.
On pg. 10, Applicant argues that Holford’s disclosure of a tobacco density less than 700 mg/cc does not render the claimed density of 150-500 mg/cc obvious because Holford does not identify, recognize, or suggest a selection of the claimed density range to control the resistance to draw characteristics of the tobacco rod. The Examiner disagrees. Holford discloses a reconstituted tobacco material having a density of less than 700 mg/cc, which conducts heat more slowly through the material and enables sustained release of aerosol ([0455-0456]). A tobacco density in the range of 700mg/cc or less would include an average tobacco density that overlaps the claimed range of 150 to 500 mg/cc and is therefore considered prima facie obvious. A teaching or suggestion to select the claimed density of 150-500 mg/cc is not required because where the claimed ranges overlap with the range taught by the prior art prima facie obviousness exists (see MPEP § 2144.05).
Applicant’s arguments, see pg. 12, filed 06/03/2026, with respect to the non-statutory double patenting rejection of claims 16 and 23 over claims 16-17, 25-26 of co-pending Application No. 18/247,981 in view of Kim (US 20220110373 A1) have been fully considered and are persuasive. Applicant has amended claim 16 of the instant application to require the aerosol generating article has a ventilation level of 15-70% which is not claimed in co-pending application 18/247,981. Therefore, the rejection has been withdrawn.
The prior art rejections below are maintained and modified based on Applicant’s amendment.
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.
Claims 16-17, and 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Holford (US 20240188625 A1) and Barnes (US 5348027 A).
Regarding claim 16, Hwang discloses a cigarette (3, “aerosol generating article”), comprising:
A front end plug (33, “upstream element”), a tobacco rod (31, “rod of aerosol generating substrate”), a first filter segment (321), and a second filter segment (322, Fig. 4, Fig. 5B, [0061-0063]),
The tobacco rod (31, “rod of aerosol generating substrate”) comprises pipe tobacco (“a shredded tobacco material”) and has a length of about 15 mm ([0065, 0067]). The length taught by the prior falls within the claimed range and is therefore considered prima facie obvious.
The first filter segment (321) and second filter segment (322) are considered to meet the claim limitation of a downstream section provided downstream of the rod of aerosol generating substrate.
The first filter segment (321) is a tube-shaped structure including a hollow therein (i.e. “at least one hollow tubular element”) which abuts a downstream end of the tobacco rod (31, Fig. 4, Fig. 5B, [0071]).
The front end plug (33, “upstream element”) abuts an upstream end of the tobacco rod (31) and the upstream end of the front end plug (33) is the upstream end of the cigarette (3, Fig. 4, Fig. 5B, [0065]).
Perforations (36, “a ventilation zone”) are formed in an area of the outer wrapper (355, “peripheral wall of the hollow tubular element”) surrounding the first segment (321, “at least one hollow tubular segment”) allowing air to flow into the first segment (321) during a puff (Fig. 5B, [0083])
Hwang does not explicitly disclose the distance between the perforations (36) and the upstream end of the front end plug (33, “upstream element”). However, Hwang discloses:
The cigarette (3) may have a total length of 48mm ([0065]).
The perforations (36) may be formed 12 to 24mm away from a rear end of the filter rod (32, i.e. downstream end of the cigarette, [0084]).
Therefore, a person having ordinary skill in the art, in view of the disclosed cigarette length and position of the perforations, could have reasonably arrived at a cigarette where the distance between the upstream end of the front end plug (33, i.e. upstream end of the cigarette) and the perforations (36) is in a range that overlaps with the claimed range of 26-33mm and is therefore considered prima facie obvious.
Hwang does not explicitly disclose the shredded tobacco material has an average density of 150 to 550 mg/cc and is in the form of cut filler or a shredded sheet of homogenized tobacco material. However, Holford, directed to an aerosol generating article (1, Fig. 211, [0206]), discloses:
An aerosol generating material (3) comprising paper reconstituted tobacco material having a density of less than about 700 mg/cc, where densities of less than 700 mg/cc conduct heat more slowly through the material and enable sustained release of aerosol ([0455-0456]).
The paper reconstituted tobacco material may be provided in cut form which is considered to be a shredded sheet of reconstituted tobacco ([0457]).
Holford does not explicitly disclose an average density of tobacco between 150 to 500mmg/cc. However, Holford discloses a tobacco density of less than 700mg/cc. A person having ordinary skill in the art would recognize that a tobacco density in the range of 700mg/cc or less would include an average tobacco density that overlaps the claimed range of 150 to 500 mg/cc and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by providing the tobacco rod with shredded reconstituted tobacco having a density of less than 700 mg/cc as taught by Holford because both Hwang and Holford are directed to smoking articles, Holford teaches shredded reconstituted tobacco having a density less than 700mg/cc enables a sustained release of aerosol, and this involves applying a known shredded tobacco material having a known density in a similar aerosol generating article to yield predictable results.
Hwang does not explicitly disclose the cigarette has a ventilation level of 15-70%.
However, Holford, directed to an aerosol generating article (1, Fig. 1, [0206]), discloses:
The article (1) has a ventilation level of 50-80% which helps slow the flow of aerosol drawn through the mouthpiece (2, i.e. downstream portion of the article) to sufficiently cool the aerosol ([0235]). The ventilation level disclosed by the prior art overlaps with the claimed range and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford, by modifying the article to have a ventilation level of 50-80% as taught by Holford because both Hwang and Holford are directed to smoking articles, Holford teaches a ventilation level of 50-80% slows the flow of aerosol allowing the aerosol to sufficiently cool, and this involves applying a known ventilation level to a similar aerosol generating article to yield predictable results.
Hwang or Holford do not explicitly disclose the resistance to draw of the rod of aerosol generating substrate.
However, Barnes, directed to cigarettes (abstract), discloses:
The pressure drop of the substrate can be varied to deliver sufficient aerosol (col. 3 lines 54-65).
The substrate has a pressure drop of 2 to 40mm water (col. 4 lines 14-18). The claimed range lies within the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford, by providing the aerosol generating substrate with a resistance to draw of 2 to 40mmWG as taught by Barnes because both Hwang and Barnes are directed to smoking articles, Barnes teaches that the pressure drop of the substrate can be varied to obtain sufficient aerosol delivery, and this involves applying a known pressure drop of a substrate to a similar smoking article to yield the predictable result of a smoking article with sufficient aerosol delivery.
Regarding claim 17, Hwang does not explicitly disclose the distance between the perforations (36) and the upstream end of the front end plug (33, “upstream element”). However, Hwang discloses:
The cigarette (3) may have a total length of 48mm ([0065]).
The perforations (36) may be formed 12 to 24mm away from a rear end of the filter rod (32, i.e. downstream end of the cigarette, [0084]).
Therefore, a person having ordinary skill in the art, in view of the disclosed cigarette length and position of the perforations, could have reasonably arrived at a cigarette where the distance between the upstream end of the front end plug (33, i.e. upstream end of the cigarette) and the perforations (36) is in a range that overlaps with the claimed range of 27-31mm.
Regarding claim 19, Holford discloses a shredded paper reconstituted tobacco material having a density of less than about 700 mg/cc ([0455-0456]).
Holford does not explicitly disclose an average density of tobacco between 250 to 400mmg/cc. However, Holford discloses a tobacco density of less than 700mg/cc. A person having ordinary skill in the art would recognize that a tobacco density in the range of 700mg/cc or less would include an average tobacco density that overlaps the claimed range of 250-400 mg/cc and is therefore considered prima facie obvious.
Regarding claim 20 Hwang discloses a second filter segment (322) positioned at the downstream end of the cigarette (3, Fig. 5B) where the user draws on the cigarette (3, [0058]), and is therefore considered to be a mouthpiece element. The second filter segment (322) may include a cellulose acetate filter ([0075]) which is considered to be a fibrous filtration material.
Regarding claim 21 Hwang discloses:
A second filter segment (322) positioned at the downstream end of the cigarette (3, Fig. 5B) where the user draws on the cigarette (3, [0058]), and is therefore considered to be a mouthpiece element, and;
The first filter segment (321) abuts an upstream end of the second filter segment (322, Fig. 5B), and;
The first filter segment (321) may be 7-20mm in length ([0070]) and the length of the second filter segment (322, “mouthpiece element”) is 4-20mm ([0075]). Therefore, the combined length of the first segment (321) and second segment (322) is in a range that overlaps with the claim range of 24-32 mm and therefore is considered prima facie obvious.
Regarding claim 22, Hwang discloses the front end plug (33, “upstream element”) may be a hollow tube ([0077, 0095]).
Regarding claim 23, Hwang discloses the front end plug (33, “upstream element”) may have a length of about 7mm ([0065]). The length taught by the prior art lies within the claimed range and is therefore considered prima facie obvious.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Holford (US 20240188625 A1) and Barnes (US 5348027 A), as applied to claim 16 above, further in view of Counts (US 5692525 A).
Regarding claim 18, The tobacco rod (31, “rod of aerosol generating substrate”) may have a length of about 15 mm ([0065]) but is not limited to the disclosed length.
Hwang does not explicitly disclose the tobacco rod (31) has a length in the range of 10 to 14mm.
However, Counts, directed to a cigarette (abstract), discloses:
A tobacco plug (80) having a length of at least 7mm to facilitate machine handling (Fig. 4B, col. 10 lines 11-19). The claimed range lies within the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford and Barnes, by providing the tobacco rod with a length of at least 7mm as taught by Counts, because both Hwang and Counts are directed to aerosol generating articles, Counts teaches a tobacco rod with a length of 7mm or great facilitates machine handling, and this involves applying a known tobacco rod length to a similar aerosol generating article to yield predictable results.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Holford (US 20240188625 A1) and Barnes (US 5348027 A), as applied to claim 16 above, further in view of Nappi (WO 2019063737 A1, as cited on IDS dated 03/31/2023).
Regarding claim 25, Hwang discloses draw resistance is an important factor when designing a cigarette ([0093]).
Hwang does not explicitly disclose the resistance to draw of the hollow tubular first filter segment (321, Fig. 5B, [0071]).
However, Nappi, directed to an aerosol generating article (10, abstract), discloses:
An aerosol generating article comprising an aerosol generating substrate (2), a hollow tubular support element (3), and filter segment (105, Fig. 2, pg. 15 para 10, para 12)
The porous hollow tubular support element provides a sufficient barrier for the aerosol forming substrate while ensuring the aerosol can flow unimpeded through the support element (pg. 9 para 1-2)
The hollow tubular support element has a resistance to draw of less than 0.1 mm H2O per mm of length (pg. 9 para 3)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford and Barnes, by using a resistance to draw of less than 0.1 mm H2O per mm length for the hollow tubular element, as taught by Nappi, because both Hwang and Nappi are directed to aerosol generating articles, Nappi teaches the low resistance to draw of the hollow tubular support element allows the aerosol to flow unimpeded through the hollow tubular support element, and this involves applying a known resistance to draw of a similar hollow tubular element to a similar aerosol generating article to yield predicted results.
Modified Hwang does not explicitly disclose the hollow tubular element has a resistance to draw of 1 to 5 mmWG. However, Hwang discloses the first filter segment (321) may have a length of 7-20mm ([0070]) and Nappi discloses a similar hollow tubular element having a resistance to draw of less than 0.1 mmH2O) per mm of length (pg. 9 para 3). Therefore, a person having ordinary skill in the art would have reasonably arrived at a smoking article having a hollow tubular element with a resistance to draw in a range that overlaps with the claimed range of 1-5 mmH2O and is therefore considered prima facie obvious.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Holford (US 20240188625 A1) and Barnes (US 5348027 A), as applied to claim 16 above, further in view of Malgat (WO 2017153443 A1) .
Regarding claim 26, Hwang discloses draw resistance is an important factor when designing a cigarette, the inner diameter and length of the front end plug (33) may be varied to impact draw resistance, and the length of the front end plug (33) may be 7mm ([0065, 0093-0095]).
Hwang does not explicitly disclose the resistance to draw of the front end plug (Fig. 5B, [0071]).
However, Malgat directed to an aerosol generating article (10, Fig. 1, pg. 21 line 21), discloses:
The resistance to draw of the plug element (90) is 1 to 5 mmWG per mm length (pg. 4, lines 12-15).
The length of the plug element (90) is 1 to 10mm (pg. 5 lines 19-21, pg. 30 claim 11).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford and Barnes, by using a resistance to draw of 1 to 5 mmWG/length and a length of 1 to 10mm for the front end plug, as taught by Malgat, because both Hwang and Malgat are directed to aerosol generating articles, Hwang teaches the length of the front end plug may be varied to achieve the desired draw resistance but is silent to the value of the draw resistance, Malgat teaches a known draw resistance per unit length and length range for a similar upstream element and one having ordinary skill in the art would be motivated to look to similar articles for workable ranges of draw resistance and length, and this involves applying a known resistance to draw per unit length and length range of a similar upstream element to a similar aerosol generating article to yield predicted results.
Therefore, a person having ordinary skill in the art, in view of the plug element resistance to draw per unit length, and length of the plug element as taught by Malgat would have reasonably arrived at a smoking article where the resistance to draw of the front end plug was in a range that overlaps with the claimed range of between 0.5 to 3 mmWG and is therefore considered prima facie obvious.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Holford (US 20240188625 A1) and Barnes (US 5348027 A), as applied to claim 16 above, further in view of Nappi (WO 2019063737 A1, as cited on IDS dated 03/31/2023) and Malgat (WO 2017153443 A1).
Regarding claim 27, Hwang discloses draw resistance is an important factor when designing a cigarette ([0093]).
Hwang does not explicitly disclose the overall resistance to draw of aerosol generating article (3, Fig. 5B).
However, Nappi, directed to an aerosol generating article (10, abstract), discloses:
An aerosol generating article comprising an aerosol generating substrate (2), a hollow tubular support element (4), and filter segment (105, Fig. 2, pg. 15 para 10, para 12)
The aerosol generating article has a total resistance to draw of 0.6 m to 1.5 mm H2O per mm length (pg. 9 para 7).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford and Barnes, to have a resistance to draw of 0.6 m to 1.5 mm H2O per mm length as taught by Nappi because both Hwang and Nappi are directed to aerosol generating articles, Nappi teaches a resistance to draw per unit length of an aerosol generating article, and one would be motivated to look to similar aerosol generating articles for workable ranges of resistance to draw, and this involves applying a known resistance to draw to a similar aerosol generating article to yield predictable results.
Hwang discloses the length of the aerosol generating article (3) may be 48mm but is not limited to the disclosed length ([0065]).
Hwang, in view of Holford, Barnes, and Nappi, does not explicitly disclose the article has a resistance to draw of 17 to 23 mmWG.
However, Malgat, directed to an aerosol generating article (10, Fig. 1, pg. 21 line 21), discloses:
The aerosol generating article (10) has a total length of 30 to 100 mm (pg. 13 lines 1-4, Fig. 1).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford, Barnes, and Nappi, to have a length in a range of 30 to 100mm as taught by Nappi because both Hwang and Nappi are directed to aerosol generating articles, Malgat teaches a known ranges of lengths of an aerosol generating article, and one would be motivated to look to similar aerosol generating articles for workable ranges of length, and this involves applying a known length to a similar aerosol generating article to yield predictable results.
Hwang, in view of Holford, Barnes, Nappi, and Malgat, does not explicitly disclose the aerosol generating article has an overall resistance to draw between 17 and 23 mmH2O. However, Nappi discloses the aerosol generating article has a total resistance to draw of 0.6 m to 1.5 mm H2O per mm length (pg. 9 para 7) and Malgat discloses that the aerosol generating article has a total length of 30 to 100 mm (pg. 13 lines 1-4). Therefore, a person having ordinary skill in the art could have reasonably arrived at a smoking article with a total resistance to draw in a range that overlaps with the claimed range of 17 and 23 mmH2O and is therefore considered prima facie obvious.
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Holford (US 20240188625 A1) and Barnes (US 5348027 A), as applied to claim 16 above, further in view of Thorens (US 20170340016 A1).
Regarding claim 28, Hwang discloses the tobacco rod (31) may comprise an aerosol generating material such as glycerin ([0066]).
Hwang does not explicitly disclose the amount of aerosol former in the aerosol generating substrate. However, Thorens, directed to an aerosol generating article (abstract), discloses:
A solid aerosol forming substrate containing tobacco ([0091])
The aerosol forming substrate comprising at least one aerosol former to facilitate the formation of a dense and stable aerosol ([0090])
The aerosol-forming substrate has an aerosol former content of greater than 5 percent on a dry weight basis ([0092]). The claimed range lies within the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Holford and Barnes, by providing the aerosol former in an amount 5% or greater on a dry weight basis, as taught by Thorens, because both Hwang and Thorens are directed to aerosol generating articles, Thorens teaches providing an aerosol former in an amount greater than 5% facilitates the formation of dense and stable aerosol, and this involves applying an aerosol former in a known amount to a similar aerosol generating article to yield predictable results.
Regarding claim 29, Thorens discloses the aerosol-forming substrate has an aerosol former content of greater than 5 percent on a dry weight basis ([0092]). The claimed range lies within the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 30, Thorens discloses the aerosol-forming substrate has an aerosol former content of greater than 5 percent on a dry weight basis ([0092]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
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.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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