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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/02/2026 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 02/02/2026.
Claims 16 and 29 are amended.
Claims 16-32 are pending.
Response to Arguments
Applicant’s arguments, see pages 6-9, filed 02/02/2026, with respect to claims 16-32 have been considered and are not persuasive.
On page 7, the Applicant argues that Malgat still does not teach or suggest the overall RTD of the downstream section, let alone one below 10 mm H2O because the air flow path before engagement with the heating device does not extend along the entirety of the equivalent downstream section of Malgat.
The Examiner respectfully disagrees.
First, as previously stated in the Final Rejection dated 11/03/2025, Malgat discloses the heated aerosol-generating article may have a low effective resistance to draw (RTD) when not coupled to an aerosol-generating device. For example, the effective RTD may be close to zero ([0008]), and preferably an RTD of less than 10 mm H2O ([0109]). Therefore, it would be obvious to one of ordinary skill in the art that if the entire article has a low resistance to draw, one close to zero and less than 10 mm H2O, then the downstream section would also have an overall resistance to draw that is less than 10 mm H2O regardless of the airflow pathways RTD. Malgat still teaches an overall RTD of the entire article that reads on what is claimed.
Second, the combination of both airflow pathways makes obvious what is claimed. The second airflow path has an RTD lower than that of the first airflow path ([0006]-[0009]) and the second air-flow path meets the first air-flow path at a position downstream the aerosol-forming substrate and continues through to the mouth end of the article ([0111]). Therefore, Malgat does indeed teach the resistance to draw of the entire downstream section being less than 10 mm H2O because both airflow paths go through the entire article and are within the claimed resistance to draw of the downstream section.
Third, it would be obvious to one of ordinary skill in the art that whether or not the airflow path starts exactly at the downstream end of the aerosol-generating substrate, the overall resistance to draw, which is the path the air flows through of the downstream section would still read on what is claimed because that is the only pathway the air flows through. The second airflow path extends throughout the entire downstream section as it is the only airflow pathway in the downstream section. Therefore, the overall RTD of the downstream section would still be the RTD of the second pathway, regardless of the pathway starting “somewhere downstream” of the aerosol-generating substrate because this is the only pathway of airflow within the article.
A modified rejection based on the amendments is provide below.
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.
Claims 16-21, 26, 28, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US-20160331032-A1).
In regards to claim 16, Malgat, directed to an aerosol-generating article with a low resistance air flow path, discloses an aerosol generating article for producing an inhalable aerosol upon heating ([0006]), the article extending from a mouth end to a distal end (Figure 1) and comprising:
A rod-shaped aerosol-generating element in the form of an aerosol-generating substrate ([0111]) comprising an aerosol former ([0123]); and
A downstream section at a location downstream of the aerosol-generating element, the downstream section extending from a downstream end of the aerosol-generating element to a mouth end of the article (the downstream section comprises the support element and the aerosol-cooling element) (Figure 1 and [0069]-[0076]),
Wherein the downstream section comprises an aerosol cooling element and a second air flow path (i.e., hollow tubular sections) ([0079] and [0111]),
Wherein the aerosol-generating substrate comprises a length of between approximately 7 to 15 mm ([0067]) and an external diameter of 5 to 12 mm ([0066]). Malgat discloses a length-to-diameter of about 0.59 to about 3. The range disclosed by the prior art overlaps the claimed range of a length-to-diameter ratio of the aerosol-generating element being from about 0.5 to 3 and is therefore considered prima facie obvious, and
the second air flow path, which extends from the end of the aerosol-generating substrate to the mouth end (i.e., the downstream section) comprising a resistance to draw of less than 10 mm H2O (claims 1-2) and an overall resistance to draw of the entire article is close to zero and preferably less than 10 mm H2O (i.e., an overall resistance to draw of the downstream section is less than 10 mmH2O) ([0008] and [0109]). It would be obvious to one of ordinary skill in the art that if the overall resistance to draw of the article is less than 10 mm H2O, the downstream section also has an overall resistance to draw of less than 10 mm H2O.
In regards to claim 17, Malgat discloses the aerosol-generating substrate comprising a length of between approximately 7 to 15 mm ([0067]) and an external diameter of 5 to 12 mm ([0066]). Malgat discloses a length-to-diameter of about 0.59 to about 3. The range disclosed by the prior art overlaps the claimed range of a length-to-diameter ratio of the aerosol-generating element is from about 1.3 to about 1.9 and is therefore considered prima facie obvious.
In regards to claim 18, Malgat discloses the length of the aerosol-generating element is from 7 to 15 mm ([0067]). The range disclosed by the prior art overlaps the claimed range of the aerosol-generating article comprising a length from about 10 to about 35 mm and is therefore considered prima facie obvious.
In regards to claim 19, Malgat discloses the aerosol-generating element has a diameter from about 5 to 12 mm ([0066]). The range disclosed by the prior art overlaps the claimed range of the diameter of the aerosol-generating element being from about 6 to 7.5 millimeters and is therefore considered prima facie obvious.
In regards to claim 20, Malgat discloses the aerosol generating article comprises tobacco that can be shreds, strips, sheets, tobacco leaf, or tobacco ribs (i.e., tobacco cut filler) ([0032]).
In regards to claim 21, Malgat discloses the aerosol aerosol-forming substrate may have an aerosol former content of between approximately 5% and approximately 30% on a dry weight basis ([0061]).
In regards to claim 26, Malgat discloses the aerosol-cooling element and the support element (i.e., hollow tubular elements), wherein the aerosol cooling element defines multiple air channels has a preferred airflow through the aerosol-cooling element in a longitudinal direction along a longitudinal channel ([0125]) and the support tube has a radially extending tube (i.e., hollow tube) ([0012] and [0129])
Malgat further discloses the aerosol-cooling element may have a length of between approximately 5 millimeters and approximately 25 mm ([0084]).
The range disclosed by the prior art overlaps the claimed range of the hollow tubular element being at least 25 mm, and is therefore considered prima facie obvious.
Malgat further discloses the length of the support element is about 5 to 15 mm ([0074]).
Malgat further discloses the cross section of the hollow tubular element is substantially constant (Figure 1).
In regards to claim 28, Malgat discloses at least one hollow tubular element 40 extends all the way to the start of the mouthpiece 50 (i.e., mouth end) (Figure 1).
While Malgat teaches that there is a mouthpiece, the Examiner notes that the claimed “mouth end” is intended use and the end of the article before the mouthpiece starts can be labeled as a mouth end by making the mouthpiece separable from the hollow tube element or omitting the mouthpiece section. Merely making separable the mouthpiece from the remainder of the article or omitting the mouthpiece such that the hollow tubular element extends all the way to “the mouth end” of the aerosol generating article would be obvious to one of ordinary skill in order to arrive at the claimed invention.
Malgat teaches embodiments wherein all the components of the downstream section are not required ([0157]) and does not require a mouthpiece to be included in the downstream section of the device.
In addition, merely making separable the mouthpiece from the remained of the
article or omitting the mouthpiece entirely such that the hollow tubular element extends all the way to the downstream end of the aerosol generating article would be obvious to one of ordinary skill in the art in order to arrive at the claimed invention. Therefore, the mouthpiece of Malgat can be omitted and the downstream section would just comprise the support elements hollow tubular element and the aerosol cooling elements hollow tubular elements that would extend to the downstream end of the downstream section.
Malgat further teaches that while the embodiment described and illustrated in Figure 1 has four elements, the four elements are not essential and according to other embodiments may comprise fewer elements ([0157]). Therefore, it would be obvious to one of ordinary skill in the art that the additional elements, such as the mouthpiece element could be omitted from the article all together such that the hollow tubular element extends all the way to the downstream end of the aerosol generating article and is considered prima facie obvious to arrive at the claimed invention.
In regards to claim 29, Malgat discloses the second airflow path is less than 10 mmH2O (claims 1-2) and further discloses the heated aerosol-generating article may have a low effective resistance to draw (RTD) which may be close to zero (i.e., an RTD of less than about 5 mm H2O) ([0008]).
The range disclosed by the prior art overlaps the claimed range of the downstream section having a resistance to draw of less than about 5 mm H2O and is therefore considered prima facie obvious.
Malgat further discloses an overall resistance to draw of the entire article is close to zero and preferably less than 10 mm H2O (i.e., an overall resistance to draw of the downstream section is less than 10 mmH2O) ([0008] and [0109]), and therefore it would be obvious to one of ordinary skill in the art that a resistance to draw close to zero would make obvious the claimed resistance to draw of the downstream section being less than 5 mm H2O.
In regards to claim 31, Malgat discloses several airflow paths, a first and a second airflow path, that extends to a downstream end of the downstream section (Figures 1-2).
Malgat further discloses an airflow path that would go through the downstream section including downstream elements such as the support plug 30 and the aerosol cooling element 40 (Figures 1-2 and [0111]).
Further, figure 2 would suggest that air can enter right adjacent to the aerosol generating portion and create an airflow path that is unobstructed, therefore it would be obvious to one of ordinary skill in the art that Malgat discloses an unobstructed airflow path to a downstream end of the downstream section.
In regards to claim 32, Malgat discloses the aerosol-forming substrate may have a length of between approximately 7 millimeters and approximately 15 mm (upstream element) ([0067]), the aerosol-cooling element may have a length of between approximately 5 millimeters and approximately 25 mm (downstream section) ([0084]), and the length of the support element is about 5 to 15 mm (downstream section) ([0074]). This would result in a ratio between the length of the downstream section and a length of the aerosol-generating element being at least 1 and is therefore considered prima facie obvious.
Claims 22-25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US-20160331032-A1) as applied to claim 16 above, and further in view of Chen (CN-110403235-A, hereinafter referring to the English Translation provided).
In regards to claim 22, Malgat discloses the second air-flow path is drawn into the rod through the wrapper (i.e., vent). It would be obvious that in order for the second air-path to enter into the downstream section there would be a ventilation zone where the arrows are provided in figure 1 at a location along the hollow tubular element. (Figure 1 and [0111]).
However, Malgat does not explicitly disclose a ventilation zone.
Chen, directed to a smoking article, discloses the smoking article comprising an aerosol-generating substrate, a support segment 2 with a tube wall, and an empty tube section 3 made of acetate fiber bundle (i.e., hollow tubular element) with ventilation holes (i.e., ventilation zone) that penetrate the empty pipe section in a radial direction ([0005]-[0006] and [0047]-[0049]).
Chen further discloses the ventilation holes have a better ventilation effect and introduce a larger amount of ambient air, which is more conductive to reduce the smoke temperature ([0066]).
Chen further discloses the ventilation zone increases the amount of smoke and effectively reduces the flue gas temperature, applying a cooling effect ([0005]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Malgat by making the hollow tubular element further comprise a ventilation zone, as taught by Chen, because both are directed to electronic cigarettes, Chen teaches the ventilation zone cools the aerosol and provides a better ventilation effect ([0066]), and this merely involves applying a known technique in the art of a similar device to yield predictable results.
In regards to claim 23, Chen discloses preferably, the ventilation rate (i.e., ventilation level) of the mouthpiece of the smoking article is 50-80% ([0018]).
The range disclosed by the prior art overlaps the claimed range of the aerosol-generating article having a vent level of at least about 10% and is therefore considered prima facie obvious.
In regards to claims 24-25, Modified Malgat discloses the aerosol-generating article comprising a hollow tubular element 3 comprising a ventilation zone (Chen [0047]).
Chen further discloses the hollow tubular section 3 is 10 mm long and the filtering section is 7 mm long (the mouth end is located at the end of the filter section) ([0042]). See Figure 2 annotated by the Examiner provided below.
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While Chen does not explicitly disclose where the ventilation zone is located in relation to the length of the hollow tubular element, Figure 2 discloses the ventilation zone falls at less than half the distance of the hollow tubular element.
Therefore if the hollow tubular element is at least 5 millimeters away from the filter section and the filter section is at least 7 mm away from the mouth end, Modified Malgat discloses the ventilation zone being at least 12 millimeters away from the mouth end.
The range disclosed by the prior art overlaps the claimed ranges of the distance between the mouthed and the ventilation zone being between 11 and 22 millimeters and is therefore considered prima facie obvious.
In regards to claim 27, Malgat discloses the hollow tubular element (Figure 1) but is silent in regards to a peripheral wall thickness of the hollow tubular element and does not explicitly disclose that thickness being less than about 1.5 millimeters.
Chen, directed to a smoking article, discloses the smoking article comprising an aerosol-generating substrate, a support segment 2 with a tube wall, and an empty tube section 3 made of acetate fiber bundle (i.e., hollow tubular element) ([0047]-[0049]).
The hollow tube section 3 is made of acetate fiber bundle (i.e., hollow tubular element), and the wall thickness of the hollow tubular element is 0.8-1.2 mm ([0014]).
The range disclosed by the prior art overlaps the claimed range of the wall thickness being less than about 1.5 millimeters and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious
to modify Malgat, by making the wall thickness of the hollow tubular element less than about 1.5 millimeters, as taught by Chen, because one of ordinary skill in the art would look to a similar reference for a known thickness in the art of a similar aerosol-generating device, especially when the original prior art is silent to one, and this merely involves applying a known wall thickness of a similar hollow tubular element to yield predictable results.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat et al. (US-20160331032-A1) and further in view of Malgat’2 et al. (US-20190075845-A1).
In regards to claim 30, Malgat discloses additional embodiments may comprise additional elements ([0157]) but does not explicitly disclose an upstream section upstream the upstream element and does not teach a resistance to draw of the upstream section being from about 10 to 70 mm H2O.
Malgat’2 directed to an article-generating article discloses an aerosol-generating article comprising an aerosol-forming substrate (abstract).
Malgat’2 further discloses an article comprising a plug element located upstream the adjacent aerosol-forming substrate within the rod ([0004]).
Malgat’2 further discloses the plug element comprising a resistance to draw from about 20 to 40 mm H2O ([0015]). The range disclosed by the prior art overlaps the claimed range of the upstream element having a resistance-to-draw between 10 and 70 mm H2O, and is therefore considered prima facie obvious.
Malgat’2 further discloses the plug element may secure form and position of the susceptor during use with the heating device ([0004]-[0006] and [0090]).
Malgat’2 further discloses the plug element may be varied to support control of a resistance to draw through the aerosol-generating article ([0014]-[0015]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Malgat, by applying an additional upstream element upstream of the upstream element having a resistance-to-draw between 5 and 80 mmH2O, as taught by Malgat, because both are directed to aerosol-generating articles, Malgat teaches a resistance-to-draw is important to control so that the user can draw air through the upstream element ([0012]-[0014]) and that the plug element secures the placement of the susceptor during use ([0004]-[0006] and [0090]), and this involves applying a known and commonly used upstream element of a similar device with a known resistance-to-draw to yield predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nappi (WO-2017148773-A1), Nappi directed to a smoking article having a filter with a hollow tubular segment, discloses the smoking article comprising a mouth cavity and a tobacco rod (i.e., aerosol generating substrate) (page 2, lines 1-10).
Nappi further discloses the hollow tubular element has an unrestricted flow channel with a substantially constant cross-sectional area for the smoke and air to flow through and is the downstream section of the article (Figure 1 and page 2, lines 33-34).
Nappi further discloses the unrestricted, hollow tube segment does not substantially contribute to increasing the resistance-to-draw (resistance-to-draw) of the smoking article. At most, the unrestricted, hollow tube segment contributes only marginally to increasing the resistance-to-draw of the smoking article. In practice, the unrestricted, hollow tube segment may be adapted to generate a resistance-to-draw in the range of approximately 1 mm H2O and approximately 20 mm H2O (page 3, lines 5-10).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755