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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 17 February 2026 has been entered.
Status of the Claims
Claims 16-31 are pending and subject to this Office Action. Claim 16 has been amended. Claim 31 has been added.
Response to Arguments
Applicant's arguments, pages 2-10, filed 02/17/2026, with respect to claim 16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 31 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 31 recites the same limitations without further limiting the claimed subject matter found in currently amended claim 16. . Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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.
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 16-22, 25, 27-29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Choi, et al (KR20200061290A, hereinafter referring to the English machine translation provided) and further in view of Malgat, et al (US20190075845A1 from IDS dates 04/04/2023).
Regarding claim 16, Choi teaches an aerosol generating article that include a tobacco rod (substrate), a shear plug (upstream element), and a filter element.[0015] Choi teaches that the shear plug is located upstream of the tobacco substrate and thus the aerosol generating article. ([0004], Figure 4) The aerosol generating article, including the shear plug, have a diameter of between 4.8mm and 9.6mm. [0016]. Choi further teaches the tobacco substrate can be between 12mm and 18mm and the filter segment having a length between 20mm and 32mm. [0018]
Choi teaches that the filter element is made up of a first segment and a second segment where the first segment is used to separate the tobacco substrate and the second segment [0099] and is in the form of a hollow tube. [0101] Choi goes on to teach the second segment is used to preform filtration which includes the adsorption of at least one of the substances included in the mainstream smoke. [0107] The second segment is located at the downstream end and used as to filter main stream smoke and thus reads on the mouthpiece element of the instant claim.
The features of Choi are shown in the annotated figure below.
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Annotated Figure 1.
Choi is silent with respect to the interior dimensions of the hollow tube portion of the first segment.
Malgat, directed to the design of aerosol generating articles for insertion into a heating device, teaches an aerosol generating article that is comprised of spacer/support element abutting an aerosol generating section and made from a hollow tube of cellulose acetate having a similar length to that of Choi. [0050- 0054 ] The hollow tube section of the article has a wall thickness between 100 micrometer and 300 micrometer [0078] equating to 0.1 mm to 0.3mm.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Choi by using a hollow tube thickness for the first segment/spacer as taught by Malgat because both Choi and Malgat are directed to aerosol generating articles for insertion into a heating device, Malgat teaches this wall thicknesses have shown to suffice stability requirements for hollow tubes, [0078], and this involves using a known wall thickness for a support element to improve similar products in the same way.
This wall thickness would result in the hollow tube having an inner diameter of 4.2mm -9.4mm. Using the values for both the length, 8mm-16mm, as taught by Choi and the greatest wall thickness inner diameter of a Choi, as modified by Malgat, 4.2mm-9.0mm, would provide an volume in the inner portion of the hollow tube of 433.34 mm3- 4071.50mm3. The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 17, Choi teaches the shear plug/ upstream element has a length of between 5mm and 9mm. [0018] This range, as taught by Choi, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Regarding claim 18, Choi discloses the filter segment is comprised of a first and a second segment. The first segment is located between the tobacco substrate and the downstream second section of the filter. [0040] As shown above in annotated figure 1, the hollow first segment abuts the second segment/ mouthpiece filter.
Regarding claim 19 and 20, Choi, as modified by Malgat, teaches the hollow tube section of the article has a wall thickness between 100 micrometer and 300 micrometer [0078] equating to 0.1 mm to 0.3mm. The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 21, Choi discloses that the first segment is a single tubular element. (see annotated figure 1 above)
Regarding claim 22, Choi teaches the first segment may have a length between 8mm and 16mm. [0093] This range, as taught by Choi, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Regarding claim 25, Choi teaches that the aerosol generating material is a tobacco material [0004] and that the tobacco material can be in the form of strands or chopped sheet of tobacco.[0029] the teaching of chopped sheets of tobacco is considered to read on the shredded tobacco material.
Regarding claim 27, Choi teaches the second segment/ mouthpiece element has a length between 10mm and 18mm. [0093] The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 28, Choi teaches the tobacco rod portion of the article has length between 12mm and 18mm. [0018] This range, as taught by Choi, overlaps the range of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Regarding claim 29, Choi teaches a device for accommodating the aerosol generating article discussed in claim 16 includes a heater [0005] there the heater is a tubular heating element that surrounds the aerosol generating article. ([0116], Fig 5)
Regarding claim 31, as discussed in claim 16, Choi teaches the aerosol generating article contains a shear plug that is upstream of the aerosol generating rod of material.
Claims 16-22, 25, 27-29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Choi, et al (KR20200061290A, hereinafter referring to the English machine translation provided) and Malgat, et al (US20190075845A1 from IDS dates 04/04/2023), as applied to claim 16, and further in view of Austin, et al (WO2020183164A1).
Regarding claim 23, neither Choi nor Malgat teach that the hollow portion of the filter element can be longer than 15mm.
Austin, directed to the design of aerosol generating articles for use in heating devices, teaches a teaches a hollow tubular element that abuts the aerosol generating material and can have a length of greater than 10mm and less than 50mm. (p10 ln 24) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Choi and Malgat by using a hollow tube structure having a length of between 10mm and 50mm taught by Austin because Choi, Malgat, and Austin are directed to aerosol generating articles for use in heating devices, Austin teaches this length can be configured to provide a temperature differential to protect the temperature sensitive material of the filter element (p 21 ln30-32), and this involves the use of known technique to improve similar products in the same way.
Regarding claim 24, Choi is silent with respect to the aerosol substrate containing an aerosol former. Malgat teaches that the substrate can contain an aerosol former [0027] but fails to teach an amount of aerosol former that could be used.
Austin teaches an aerosol former can be added to the aerosol generating substrate that the substrate comprises less than 25% of the aerosol forming substrate (p19 ln 4-5). Austin notes that all % refer to a dry weight basis. (p 23 ln 17-18)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Choi and Malgat by using the amount of aerosol forming material as taught by Austin because Choi, Malgat, and Austin are directed to aerosol generating articles, Austin teaches such aerosol forming material may improve the delivery of flavour from the aerosol generating material (p 21 ln30-32), and this involves the use of known technique to improve similar products in the same way.
Regarding claim 26, Choi and Malgat are silent as to the density of the aerosol forming substrate density in the smoking article.
Austin teaches an aerosol generating article that has an aerosol generating substrate that has a density of less than 700 milligrams per cubic centimeter. (p 20 ln 1-2) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Choi and Malgat by using the aerosol generating substrate tobacco having a density as taught by Austin because Choi, Malgat, and Austin are directed to aerosol generating articles, Austin teaches such tobacco material has been found to be particularly effective at providing an aerosol generating material which can be heated quickly to release an aerosol, as compared to denser materials (p 20 ln 2-5), and this involves a simple substitution of one known element for another to obtain predictable results
Regarding claim 30, Choi and Malgat do not teach that the hollow tube portion of the aerosol generating article would be inserted into the aerosol generating system.
Austin teaches an aerosol generating article that is used with an aerosol provision system. (Abstract) The device comprises an electrically-conductive heating element that surrounds the heating zone that can be tubular [0159] and allows for the insertion of an aerosol generating article into the device for heating. Austin teaches that the article can be fully inserted into the heating assembly ([0176], Figure 4) and that a portion of the mouthpiece protrudes for the device. (p 46 ln 14-16)
As discussed above, Austin teaches that the hollow portion and filter element is between 30mm and 50mm. The prior art further discloses that the majority of the hollow portion is housed in the device when the article is inserted (Figure 4). As such a person having ordinary skill in the art would realize that at least 10mm of the hollow section was located in the heating chamber when the article is being heated.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Gindrat and Zuber by using the aerosol generating device to heat the aerosol generating article as taught by Austin because Gindrat, Zuber, and Austin are directed to aerosol generating articles, Austin teaches using a device to heat the aerosol generating article is sensorially closer to that generated in factory made cigarette (FMC) products than the aerosol produced by other non-combustible aerosol provision systems. (p 37 ln 18-20), and this involves applying a known technique of heating an aerosol generating article to a known product ready for improvement to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755