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 .
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.
Response to Arguments
Applicant’s response filed June 9, 2026 contains no claim amendments and only remarks. The remarks have been fully considered and are persuasive with respect to the prior art as applied to the claimed mouthpiece element resistance to draw range, see Remarks page 4-5. Therefore, Hepworth is withdrawn as prior art. However, upon further consideration, a new ground(s) of rejection is made in view of Cheong (US 2020/0352220). Accordingly, this action is non-final as the new ground of rejection was not necessitated by Applicant’s response.
On pages 5-7, Applicant argues that a person of ordinary skill in the art would not consider replacing Malgat ’032’s support element with 30 Hejazi’s longer intermediate component 110 because there is no encouragement for Malgat ’032’s support element 30 to have a cooling function. Applicant fails to address the motivation to use Hejazi’s intermediate component 110 to modify Malgat ‘032 i.e., for “providing a substantially rigid support element that is substantially inflexible along its longitudinal axis having a length in the inclusive range of approximately 10 mm to approximately 30 mm”, (non-final Office Action dated March 9, 2026, pages 6-7). There is nothing prohibiting adding additional cooling to Malgat ‘032 which Applicant, and not the prior art, deems “redundant and conflicting” especially in view this determination by Applicant is based on the combination being made to add the hollow intermediate component for a cooling reason when the rejection did not add it for that reason, but rather added it for the reason stated above. Therefore, this argument is not persuasive for the reasons stated above. Applicant further argues lengthening Malgat ‘032’s support element 30 introduces additional material without providing any functional improvement within the context of Malgat ‘032. This argument is not persuasive as Malgat ‘032 was silent on a support element length of at least 17 mm as discussed in the rejections below nor is there any requirement that a prior art reference supply any motivation to modify itself as Applicant alleges. See MPEP 2143.I.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 16 requires a hollow tubular element having a length of at least 17 mm. Claim 23 requires a length of the hollow tubular element is at least 15 mm which fails to further limit claim 16 upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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 16, 20, 22-24, 26, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2016/0331032, cited on IDS dated June 3, 2023) in view of Cheong (US 2020/0352220), and further in view of Hejazi et al. (US 2019/0281891).
Regarding claims 16 and 20, Malgat discloses an aerosol generating article (10) comprises a plurality of elements assembled in the form of a rod having a mouth end (70) and a distal end (80) upstream from the mouth end (¶[0121]). The aerosol generating article (10) comprising (see Fig. 1):
an aerosol-forming substrate (20) (reads over a rod of aerosol-generating substrate), ¶[0121]); the aerosol-forming substrate comprises an aerosol former of between approximately 5% and approximately 30% on a dry weight basis (¶[0061]), which completely overlaps the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
a mouthpiece (50), (reads over mouthpiece element) located downstream of the aerosol-forming substrate comprising cellulose acetate tow filter of low filtration efficiency, (¶[0121, 0126]);
a support element (30) (reads over a hollow tubular element) located immediately downstream of and abutting the aerosol-forming substrate (20) (reads over located between the rod of aerosol-generating substrate and the mouthpiece element), (¶[0069], [0124]). The support element may be formed from any suitable material or combination of materials. For example, the support element may be formed from one or more materials selected from the group consisting of: cellulose acetate; cardboard; crimped paper, such as crimped heat resistant paper or crimped parchment paper; and polymeric materials, such as low density polyethylene (LPDE), thereby reading over the claimed materials.
Malgat does not explicitly disclose the resistance to draw of the mouthpiece element (50) is between 4 mm H2O and 11 mm H2O (Claim 16); between 6 mm H2O and 11 mm H2O (Claim 20).
Cheong, directed to an aerosol generating article (400), (Fig. 5, ¶[0073-0074]), teaches a rear-end filter segment (423) arranged at a rear end contacting the user’s mouth during smoking (reads over a mouthpiece element) having a suction resistance of 1 mmWG/mm to 30 mmWG/mm (Fig. 5, ¶[0080, 0088]). Cheong additionally teaches a filter structure lateral cross section of the rear-end filter segment (423) may be formed of cellulose acetate, (Fig. 6, ¶[0084-0085]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Malgat by providing the mouthpiece with a suction resistance of 1 mmWG/mm to 30 mmWG/mm, as taught by Cheong, because both Malgat and Cheong are directed to aerosol generating articles, Cheong teaches a similar aerosol generating article having a mouthpiece element (i.e., the rear-end filter segment of Cheong) and one of ordinary skill in the art would be motivated to look to similar aerosol generating articles for workable ranges of resistance to draw across a mouthpiece element, and this involves applying a known range of resistance to draw to a similar mouthpiece element in a similar aerosol generating article to yield predictable results.
A person having ordinary skill in the art, in view of the a mouthpiece (50) of Malgat, (Fig. 1, ¶[0121, 0126])) having a length of between approximately 5 and approximately 14 mm (¶[0093]) disclosed by Malgat and a mouthpiece suction resistance of 1 mmWG/mm to 30 mmWG/mm (¶[0080, 0088]) taught by Cheong, could have reasonably arrived at a smoking article having a mouthpiece element with a resistance to draw that overlaps with the claimed ranges of Claims 16 and 20. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Malgat discloses the support element may have a length of between 5 mm and 15 mm (¶[0074]), but does not explicitly disclose the support element having a length of at least 17 mm.
Hejazi, directed to smoking articles, in which a material is heated, preferably not combusting the material to any significant degree, to form an aerosol and/or inhalable substance (reads over aerosol-generating article); such articles most preferably being sufficiently compact to be considered “hand-held” devices, (abstract, ¶[0026]). Hejaz teaches the smoking article (100) includes a heat source (104), a heat transfer component (105), a first inhalable substance medium (106), a second inhalable substance medium (108), an intermediate component (110) and a filter (112). In the depicted implementation, the intermediate component (110) and the filter together comprise a mouthpiece (114), (Fig. 2, ¶[0031], [0065]). In the depicted implementation, the intermediate component (110) comprises a substantially rigid member that is substantially inflexible along its longitudinal axis. The intermediate component (110) comprises a hollow tube structure (reads over a hollow tubular element) and is included to add structural integrity to the smoking article (100) and provide for cooling the produced aerosol and in some implementations, may be used for collecting the aerosol. The intermediate component (110) comprises a hollow cylindrical element constructed of a paper or plastic material (such as, for example, ethyl vinyl acetate (EVA), or other polymeric materials such as poly ethylene, polyester, silicone, etc. or ceramics (e.g., silicon carbide, alumina, etc.), or other acetate fibers, (¶[0065]).
In various implementations, the size and shape of the intermediate component (110) may vary, for example the length of the intermediate component may be in the inclusive range of approximately 10 mm to approximately 30 mm, (¶[0065]). The length in the inclusive range of approximately 10 mm to approximately 30 mm completely overlaps the claimed ranges of Claims 16 and 23. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Malgat by providing a substantially rigid support element that is substantially inflexible along its longitudinal axis having a length in the inclusive range of approximately 10 mm to approximately 30 mm as taught by Hejazi which would add structural rigidity to the smoking article (i.e., the aerosol generating article of Malgat) and provide for cooling the produced aerosol to be inhaled by a user. One of ordinary skill in the art would be motivated to look to similar aerosol-generating articles for ranges of length of a hollow tubular element located between the rod of aerosol-generating substrate and the mouthpiece element which involves applying suitable characteristics to a similar product with a reasonable expectation of success.
the mouthpiece element may have a length of between 5 mm and 20 mm (Malgat ¶[0093]). The combined length of the mouthpiece element (50) and the support element (30), having a length of approximately 10 mm to approximately 30 mm as modified by Hejazi, is therefore between approximately 15 mm and 50 mm which completely overlaps the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claim 22, modified Malgat discloses the support element (30) consists of a continuous hollow tubular segment, (Malgat Fig. 1). This reads over Claim 22.
Regarding claim 24, modified Malgat discloses a solid aerosol substrate may comprise, for example, one or more of powder, granules, pellets, shreds, strands, or sheets containing one or more of: herb leaf, tobacco leaf, tobacco ribs, expanded tobacco and homogenised tobacco, (Malgat ¶[0032]). This reads over shredded tobacco material limitation of Claim 24.
Regarding claim 26, modified Malgat discloses a mouthpiece length between approximately 5 mm and approximately 20 mm, (Malgat ¶[0093]), which overlaps the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable. This reads over the Claim 26.
Regarding claim 29, modified Malgat discloses an aerosol-generating system (100) comprising an aerosol-generating device (110) and an aerosol-generating article (10), (Malgat Fig. 3, ¶[0149]). The aerosol-generating device (110) comprises a housing (6130) with the heating element (6120) mounted within an aerosol-generating article receiving chamber (reads over a heating chamber configured to receive the aerosol-generating article) within the housing (6130), (Malgat Fig. 4, ¶[0160]). The heating element mounted within the receiving chamber reads over at least a heating element provided at or about a periphery of the heating chamber. This reads over Claim 29.
Regarding claim 30, modified Malgat discloses the support element (30) is fully located with the receiving chamber, (Malgat Annotated Fig. 3). This reads over at least 30 percent of the length of the hollow tubular element is located within the receiving chamber of Claim 30.
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Regarding claim 31, modified Malgat discloses in a second embodiment, the support element (30) is a hollow tube that defines a radially-extending hole (37) between an inner surface of the tube (31) and an outer surface of the tube (32). The hole (37) provides an additional air flow path allowing access between inner portions of the aerosol-generating article and the perforated wrapper (60) (Malgat Fig. 2, ¶[0129]). This reads over the at least one ventilation zone configured to admit air into the rod of the aerosol-generating substrate downstream of the aerosol-generating substrate. This reads over Claim 31.
Claims 17 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2016/0331032, cited on IDS dated June 3, 2023) in view of Cheong (US 2020/0352220) and Hejazi et al. (US 2019/0281891) as applied to claim 16, and further in view of Hepworth (US 2022/0183347).
Modified Malgat discloses all the limitations as set forth above.
Regarding claim 17, modified Malgat discloses the support element (30) may have an external diameter of between approximately 5 mm and approximately 12 mm, (Malgat ¶[0073]). The support element of modified Malgat has a length in an inclusive range of approximately 10 mm and approximately 30 mm as discussed in the rejection of claims 1 and 23 above.
Hepworth, directed to an article for use in a non-combustible aerosol-provision system
(abstract), teaches an article (1) comprising a mouthpiece (2) and a rod of aerosol-generating material (3), (Fig. 1, ¶[0058]). Hepworth teaches mouthpiece (2) includes a second hollow tubular element (8), referred to as a cooling element that has a wall thickness of at least about 100 µm (i.e., 0.1 mm) and up to about 1.5 mm, (¶[0075-0076]).
A person having ordinary skill in the art before the effective filing date of the claimed invention, when considering the support element length and external diameter and the wall thickness of the hollow tubular element as taught by Hepworth would have reasonably been suggested an internal diameter of the support element of Malgat to be between approximately 4.8 mm (0.1 mm wall thickness) and approximately 9 mm (1.5 mm wall thickness). Therefore, the volume would be between approximately 181 mm3 and approximately 1908 mm3 which completely overlaps the claimed range of at least 300 mm3. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point, especially values at the midpoint of the range, within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable. This reads over Claim 17.
Regarding claim 27, modified Malgat does not explicitly disclose the wall thickness of the support element (30).
Hepworth teaches article (1) mouthpiece (2) includes a second hollow tubular element (8), referred to as a cooling element that has a wall thickness of at least about 100 µm and up to about 1.5 mm, (¶[0075-0076]) which are overlapped by the claimed range. The second hollow tubular element (8) is hollow to provide a chamber for aerosol accumulation yet rigid enough to withstand axial compressive forces and bending moments that might arise during manufacture and while the article (1) is in use, (¶[0077]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of modified Malgat wherein the support element (30) has a wall thickness in the range as taught by Hepworth which is rigid enough to withstand axial compressive forces and bending moments while the article of Malgat is in use. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable. This reads over Claim 27.
Claims 18 -19 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2016/0331032, cited on IDS dated June 3, 2023), in view of Cheong (US 2020/0352220) and Hejazi et al. (US 2019/0281891) as applied to claim 16, and further in view of Malgat et al. (US 2019/0075845), hereinafter Malgat1.
Regarding claim 18, modified Malgat discloses all the claim limitations as set forth above but does not explicitly teach the upstream element.
Malgat1, directed to an aerosol-generating article (abstract), teaches a plug element (90) (reads over an upstream element) located at the extreme upstream end (80) of the aerosol-generating article (10), (Fig. 1, ¶[0093]). Malgat1 additionally teaches the plug element may be used to protect the distal end of the aerosol-forming substrate, (¶[0005]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Malgat and include a plug element on the extreme upstream (distal) end of the article as taught by Malgat1 which provides protection to the distal end of the aerosol-forming substrate which involves the use of a known technique of using a plug with a reasonable expectation of success. This reads over Claim 18.
Regarding claim 19, modified Malgat does not explicitly teach the resistance to draw of the plug element of Malgat1 is less than 2 mm H2O.
Malgat1 teaches the resistance to draw of the plug element (90) is 1 to 5 mm H2O per mm of length of the plug element, (¶[0015]); the length of the plug element (90) is 1 to 10 mm, (¶[0021]).
Therefore, a person having ordinary skill in the art before the effective filing date of the claimed invention, when considering the plug element resistance to draw per unit length and the length of the plug element, would have been reasonably suggested an aerosol-generating article with a resistance to draw of the plug element in the range of 1 to 5 mm H2O (using a plug element having a length of 1 mm) which completely overlaps the claimed range of less than 2 mm H2O. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). This reads over Claim 19.
Regarding claim 28, modified Malgat does not explicitly teach the aerosol-generating substrate resistance to draw.
Malgat1 teaches the aerosol-forming substrate may have the same resistance to draw as the plug element, (¶[0015]), which is in the range of 1 to 5 mm H2O, (see Claim 19 rejection above) which overlaps the claimed range of between 4 mm H2O and 10 mm H2O. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable. This reads over Claim 28.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2016/0331032, cited on IDS dated June 3, 2023), in view of Cheong (US 2020/0352220) and Hejazi et al. (US 2019/0281891) as applied to claim 16, and further in view of Nappi et al. (US 2020/0205468, cited on IDS dated June 22, 2023).
Modified Malgat discloses all the claim limitations as set forth above.
Regarding claim 21, modified Malgat teaches all the claim limitations as set forth above and additionally teaches the resistance to draw of the plug element is 1 to 5 mm H2O (see claim 19 rejection), the aerosol forming substrate may have the same resistance to draw as the plug element, (Malgat1 ¶[0015]), and the aerosol-generating article may have a total length between 30 mm and 100 mm, (Malgat1 ¶[0044]). However, modified Malgat does not explicitly teach the aerosol-generating article has an overall resistance to draw of 20-22 mm H2O.
Nappi, directed to an aerosol-generating article (10), (abstract), teaches the aerosol-generating article (10) comprising an aerosol-generating substrate (2), a hollow tubular support element (3), and a filter segment (105), (Fig. 2, ¶[0099]). Nappi teaches preferably, the aerosol-generating article has a total resistance to draw of from about 0.6 mm H2O to about 1.5 mm H2O per mm of length, (¶[0047]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Malgat with an aerosol-generating article that has a resistance to draw of about 0.6 mm H2O to about 1.5 mm H2O per mm of length as taught by Nappi. One of ordinary skill in the art would be motivated to look to similar aerosol-generating articles for ranges of resistance to draw which involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Further, a person having ordinary skill in the art before the effective filing date of the claimed invention, when considering the resistance to draw for the aerosol-generating article as taught by Nappi ¶[0047] and the overall length of the aerosol-generating article as taught by Malgat1 ¶[0044], would have been reasonably suggested an aerosol-generating article with a resistance to draw in the range of 18 to 60 mm H2O (using a resistance to draw of 0.6 mm H2O) which completely overlaps the claimed range of between 20 mm H2O to 22 mm H2O. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). This reads over Claim 21.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 2016/0331032, cited on IDS dated June 3, 2023) in view of Cheong (US 2020/0352220) and Hejazi et al. (US 2019/0281891), as applied to claim 24, and further in view of Gindrat (US 2014/0166032).
Regarding claim 25, modified Malgat does not explicitly teach the aerosol-generating substrate shredded tobacco material density.
Gindrat, directed to smoking article rod of tobacco material for use in a smoking article, (abstract), teaches in Example 1 the average density of five rods of the same dimensions comprising shreds of homogenised tobacco material is about 360 mg/cm3 to about 470 mg/cm3, (Fig. 3, ¶[0137]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Malgat by using a shredded tobacco material density range in the aerosol-generating substrate as taught by Gindrat which is completely overlapped by the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). This reads over Claim 25.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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