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
This office action is in response to Applicant’s amendments filed 04/21/2026.
Claims 29-35 are pending and are subject to this Office Action.
Claim 24 is amended.
Claims 36-56 are previously withdrawn.
Response to Amendment
The examiner withdraws the 112(b) rejection of claim 34 due to amendments to the claims filed 04/21/2026.
Response to Arguments
Applicant's arguments, see pages 8-12, filed 04/21/2026, with respect to the 103 rejection of claim 29 have been fully considered but they are not persuasive.
On pages 9-10 the Applicant argues that prior art Eusepi does not teach "a tubular element comprising…a folded end portion forming a first end wall at the first end of the tubular body". Specifically, the Applicant notes that the edge portion 10a of Eusepi is not made up of the tubular wrapper 1, and is instead a separate portion. The Applicant further argues that Eusepi does not have the advantages of the present invention.
The Examiner disagrees.
Eusepi teaches a tubular element represented by sub unit 100. The sub unit 100 of Eusepi is explicitly taught to comprise a tubular body (tubular wrapper 1) and a folded end portion (edge portion 10a) ([0187]; see Figs. 12C-D).
The Examiner notes that the claim does not require that the tubular body 1 comprise the folded end portion 10a but rather the tubular element comprises a tubular body and a folded end portion, wherein the folded end portion forms a first end wall at the first end of the tubular body.
Furthermore, the Examiner notes that the prior art invention comprises all recited elements of the claims. Therefore, the prior art meets the claim limitations regardless of perceived advantages being met.
On pages 10-11 the Applicant argues that prior art Crooks does not appropriately suggest modification to reach the claimed arrangement of the ventilation zone. The applicant argues that Crooks teaches the location of the ventilation zone on a solid cellulose acetate tow filter element, and not a hollow tubular element defining an open cavity as in the primary invention of Eusepi. Thus, one having ordinary skill in the art would not be motivated to apply Crooks to Eusepi and the application of the ventilation zone to Eusepi would yield a different airflow path, pressure drop, and structure that that claimed.
The Examiner disagrees.
Eusepi teaches a ventilation zone (strip 1b) having permeability properties ([0186]).
Crooks teaches a circumferential row of perforations to increase air dilution ([0082]). Crooks teaches that the positioning of the perforations may be varied to control characteristics of the article ([0099]). Crooks does not explicitly teach that the ventilation zone must be located on a solid cellulose acetate tow filter, but merely teaches a known distance to position a ventilation zone on an article. Thus, the disclosure of Crooks is not considered to constitute teaching away from the application of a ventilation zone to a hollow tube and the application of a mere distance measurement to Eusepi is considered appropriate. The Examiner notes that the claim does not require airflow path, pressure drop or structural constraints resulting from the ventilation zone.
Thus, the rejection is maintained.
The following is a modified rejection based on amendments 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 29-35 are rejected under 35 U.S.C. 103 as being unpatentable over Eusepi et al. (US 20210100279 A1) in view of Crooks et al. (US 20040134631 A1).
Regarding claim 29, Eusepi teaches a tubular element (sub unit 100; Fig. 12A; [0181]) for an aerosol-generating article (smoking article), the tubular element comprising:
a tubular body (tubular wrapper 1) defining a cavity (containment chamber 2) extending from a first end (end 3a; [0183]) of the tubular body to a second end (end 3b; [0183]) of the tubular body;
a folded end portion (edge portion 10a; [0199]) forming a first end wall (closing element 10; [0187]) at the first end of the tubular body, the first end wall delimiting an opening ([0044], [0210] teaches a plurality of holes or perforations or leaving some portions of the opening uncovered) for airflow between the cavity and an exterior of the tubular element;
and a ventilation zone (strip 1b; [0186]) at a location along the tubular body of the tubular element.
Eusepi does not explicitly teach the configuration of the ventilation zone.
Crooks, directed to a tubular element (tipping material 45; Fig. 1; [0082]) for an aerosol-generating article (cigarette 10; [0080]), comprising a tubular body defining a cavity (tipping material 45 defining cavity), an end portion (mouth end), and a ventilation zone ([0082]), teaches that a ventilation zone may comprise a circumferential row of perforations between about 5-15 mm from the end portion ([0105] teaches 13mm which anticipates the claimed range).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Eusepi by making the ventilation region a circumferential row of perforations between about 5-15 mm from the end portion as taught by Crooks because both Eusepi and Crooks are directed to tubular elements comprising ventilation zones, Eusepi is silent as to the precise configuration of the ventilation zone and one with ordinary skill would be motivated to look to prior art for a known and suitable configuration, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 30, Eusepi teaches that the ventilation zone comprises a plurality of perforations through the tubular body ([0185-0186] teaches that tubular body may be comprised of strip 1b, which may comprise a plurality of perforations).
Regarding claim 31, Crooks teaches that the ventilation zone comprises at least one circumferential row of perforations extending around the tubular body (Crooks [0105]).
Regarding claim 32, Crooks teaches that the tubular element has a ventilation level from about 20 percent to about 70 percent ([0105] teaches 45 percent, which anticipates the claimed range).
Regarding claim 33, Eusepi teaches that the tubular element is formed from a paper material ([0022]).
Regarding claim 34, Eusepi teaches at least a first portion of the tubular element forming the first end wall is air impermeable ([0210] teaches leaving some portions of the opening uncovered. It would be expected that, in this case, a first portion of the first end wall would be air impermeable).
Regarding claims 29 and 35, Eusepi teaches a tubular element (sub unit 100; Fig. 12A; [0181]) for an aerosol-generating article (smoking article), the tubular element comprising:
a tubular body (tubular wrapper 1) defining a cavity (containment chamber 2) extending from a first end (end 3a; [0183]) of the tubular body to a second end (end 3b; [0183]) of the tubular body;
a folded end portion (blocking portion 20 and closing element 10; Figs. 11A-11D; [0199], [0317]) forming a first end wall (blocking portion 20) at the first end of the tubular body, the first end wall delimiting an opening for airflow between the cavity and an exterior of the tubular element (first end wall 20 delimits an opening for the placement of closing element 10, which allows for airflow [0044], [0344]);
and a ventilation zone (strip 1b; [0186]) at a location along the tubular body of the tubular element;
wherein the first end wall extends partially into the cavity of the tubular body and forms an angle of less than 90 degrees with an inner surface of the tubular body (Figs. 11B, 11D; [0326-0327]), as required by claim 35.
Eusepi does not explicitly teach the configuration of the ventilation zone.
Crooks, directed to a tubular element (tipping material 45; Fig. 1; [0082]) for an aerosol-generating article (cigarette 10; [0080]), comprising a tubular body defining a cavity (tipping material 45 defining cavity), an end portion (mouth end), and a ventilation zone ([0082]), teaches that a ventilation zone may comprise a circumferential row of perforations between about 5-15 mm from the end portion ([0105] teaches 13mm which anticipates the claimed range).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Eusepi by making the ventilation region a circumferential row of perforations between about 5-15 mm from the end portion as taught by Crooks because both Eusepi and Crooks are directed to tubular elements comprising ventilation zones, Eusepi is silent as to the precise configuration of the ventilation zone and one with ordinary skill would be motivated to look to prior art for a known and suitable configuration, and this involves applying a known teaching to a similar product to yield predictable results.
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 Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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