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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 17, 2026 has been entered.
Response to Amendment
Claims 16-31 are pending and presently examined. Claims 16 is amended. Claim 31 is new.
Response to Arguments
Applicant’s arguments, pages 6-9, filed February 17, 2026, with respect to the rejection of claim 16 under 35 U.S.C. 103 over Malgat (US 2016/0331032) in view of Hepworth (US 2022/0183347) have been fully considered and are persuasive. Applicant amended claim 16 to require that the at least one hollow tubular segment of the downstream section has a length of at least 17 mm. Malgat discloses the support element (“a hollow tubular element”) may have a length of 5 to 15 mm (¶[0074]). Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground of rejection is made in view of a combination of newly found prior art and previously applied prior art.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
On pg. 9, Applicant argues that a person of ordinary skill in the art would not look to Hepworth for teachings related to a support element. However, the prior office action relied upon Hepworth for teaching a resistance to draw (RTD) of the mouthpiece element.
The remaining arguments are directed to amendments to the claims which are addressed in the rejection below.
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 16-17, 20, 22-24, 26-27, 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 Hepworth (US 2022/0183347), 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).
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]). The resistance to draw across the mouthpiece is less than 40 mm H2O which such pressure drops have been found to allow sufficient aerosol to pass through the mouthpiece (2) to the consumer, (¶[0070]). The resistance to draw range of less than 40 mm H2O completely overlaps 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).
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 with a mouthpiece that has a resistance to draw that is less than 40 mm H2O as taught by Hepworth which would allow sufficient aerosol to pass through the mouthpiece to the consumer, which involves applying suitable characteristics to a similar product with a reasonable expectation of success.
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 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 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, (see claim 27 rejection above).
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 been reasonably 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.
Regarding claim 22, modified Malgat discloses the support element (30) consists of a continuous hollow tubular segment, (Malgat Fig. 1).
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 the claim.
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.
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 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.
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 the claim.
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.
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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.
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 Hepworth (US 2022/0183347) 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.
Modified Malgat discloses all the limitations as set forth above.
Regarding claim 18, modified Malgat 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.
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).
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.
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 Hepworth (US 2022/0183347) as applied to claim 16, in view of Malgat et al. (US 2019/0075845), hereinafter Malgat1, 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 the resistance to draw of the plug element is 1 to 5 mm H2O (see claim 19 rejection) and the aerosol forming substrate may have the same resistance to draw as the plug element, (Malgat1 ¶[0015]). Modified Malgat further teaches the aerosol-generating article may have a total length between 30 mm and 100 mm, (Malgat1 ¶[0044]).
Modified Malgat does not explicitly teach the overall resistance to draw of the aerosol-generating article of 20-22 mm H2O.
Nappi, directed to an aerosol-generating article (10), (abstract), teaches the aerosol-generating article 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).
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 Hepworth (US 2022/0183347) 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).
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
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747