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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/30/26 has been entered.
Claim Objections
Applicant is advised that should claim 16 be found allowable, claim 32 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 16-19 and 30-34 are rejected under 35 U.S.C. 103 as being unpatentable over Collins et al. (US 5505214).
Claims 16 and 32-33. Collins et al. discloses an electrical smoking article comprising disposable tobacco flavor unit (aerosol-generating article) and a reusable permanent portion (aerosol-generating device) including a source of electrical energy, a set of reusable heating elements, and control circuitry. The reusable or permanent portion includes a permanent cavity (device cavity) at the mouth end thereof for insertion of the disposable tobacco flavor unit (Column 4, lines 27-51; Figures 1 and 2). Reusable portion 20 includes tube 31 (body) and heating elements 23 (heater). Heating elements 23 are linear, extending from a point slightly spaced away from the mouth end of cavity 30 to a point slightly spaced away from back-flow filter cavity 43. Chamfered ends 40 of heating elements 23 at mouth end of cavity 30 (device cavity) provide a lead-in for the insertion of disposable tobacco flavor unit 21. Heating elements 23 are preferably distributed substantially uniformly around the circumference of cavity 30 (device cavity) (Column 7, line 60 – Column 8, line 19; Figures 1, 2, and 4). Disposable tobacco flavor unit 21 (aerosol-generating article) preferably includes tobacco flavor material 27 (aerosol-generating element) positioned on carrier 36, free-flow filter 28 (hollow tubular element of the downstream section), back-flow filter 29 (upstream section), mouthpiece filter 46 (downstream section at mouth end) and aerosol barrier tube 35. When tobacco flavor unit 21 is inserted in cavity 30 of reusable portion 20, aerosol barrier tube 35 fits over the outside surface 51 of heater elements 23 whereas back-flow filter 29, tobacco flavor material 27 and free-flow filter 28 fit into cavity 30 (thus, the heater elements externally heat the tobacco flavor unit) (Column 8, lines 20-49; Figures 3a, 4). Adjacent the mouth side of tobacco flavor material 27 is optional free-flow filter 28. The primary purpose of free-flow filter 28 is to provide structural support and facilitate attachment of carrier 36 and back-flow filter 29 to unit 21. Thus, free-flow filter 28 preferably has a low resistance-to-draw (i.e., provides for the "free-flow" of aerosol or vapor). Alternatively, if desired, a hollow tube (hollow tubular element) can be provided in its place (Column 8, lines 50-59; Figure 4).
Collins et al. does not explicitly disclose that the resistance-to-draw of the downstream section is less than about 10 mm H2O or that the resistance-to-draw of the upstream section is at least 5 mm H2O. However, Collins et al. does teach that the free-flow filter 28 preferably has a low resistance-to-draw (i.e., provides for the "free-flow" of aerosol or vapor) (Column 8, lines 50-59). Collins et al. also teaches that the downstream section may be a hollow tube instead of a free-flow filter (Column 8, lines 50-59). It would have been obvious to one of ordinary skill in the art before the effective filing date that the resistance-to-draw of the downstream section is less than about 10 mm H2O since Collins et al. explicitly states that the free-flow filter 28 preferably has a low resistance-to-draw to provide for the "free-flow" of aerosol or vapor. It also would have been obvious to one of ordinary skill in the art before the effective filing date that the resistance to draw is a result effective variable and the resistance-to-draw of the upstream section may at least 5 mm H2O as a matter of design choice.
Claim 17. Collins et al. discloses that the free-flow filter 28 (downstream section), which may be a hollow tube (hollow tubular element), extends from the downstream end of the tobacco flavor material 27 (aerosol-generating element) to the mouthpiece filter 46 (mouth end) of the disposable tobacco flavor unit (aerosol-generating article) (Figure 4).
Claim 18. Collins et al. discloses that heating elements 23 are preferably distributed substantially uniformly around the circumference of cavity 30 (thus, circumscribing the device cavity) (Column 7, line 60 – Column 8, line 19; Figures 1, 2, and 4). The reusable heaters are disposed in the permanent cavity in such a way that they are in thermal transfer relationship with the disposable tobacco flavor unit when the unit is inserted into the permanent cavity. This can be accomplished by having the heaters protrude from the sides of the cavity and making the disposable unit partly compressible, so that the heaters press into the carrier material which supports the tobacco flavor medium (Column 4, lines 41-51).
Claim 19. Collins et al. discloses that the heaters are capable of reaching a temperature of between about 200.degree. C. and about 700.degree. C. when in thermal transfer relationship with the tobacco flavor medium (Column 6, lines 42-49). Since the range “about 200.degree. C. and about 700.degree. C” overlaps at the endpoint the claimed range of “about 180 degrees Celsius and about 200 degrees Celsius”, a prima facie case of obviousness exists (MPEP 2144.05(I)).
Claim 30. Collins et al. discloses that free-flow filter 28 (downstream section) may comprise a hollow tube (hollow tubular element which is an unobstructed airflow pathway) extends from the downstream end of the tobacco flavor material 27 (aerosol-generating element) to the mouthpiece filter 46 (mouth end) at the downstream end of the downstream section (Figure 4).
Claim 31. Collins et al. discloses an electrical smoking article comprising disposable tobacco flavor unit (aerosol-generating article) and a reusable permanent portion (aerosol-generating device) including a source of electrical energy, a set of reusable heating elements, and control circuitry. The reusable or permanent portion includes a permanent cavity (device cavity) at the mouth end thereof for insertion of the disposable tobacco flavor unit (Column 4, lines 27-51; Figures 1 and 2). Reusable portion 20 includes tube 31 (body) and heating elements 23 (heater). Heating elements 23 are linear, extending from a point slightly spaced away from the mouth end of cavity 30 to a point slightly spaced away from back-flow filter cavity 43. Chamfered ends 40 of heating elements 23 at mouth end of cavity 30 (device cavity) provide a lead-in for the insertion of disposable tobacco flavor unit 21. Heating elements 23 are preferably distributed substantially uniformly around the circumference of cavity 30 (device cavity) (Column 7, line 60 – Column 8, line 19; Figures 1, 2, and 4). Disposable tobacco flavor unit 21 (aerosol-generating article) preferably includes tobacco flavor material 27 (aerosol-generating element) positioned on carrier 36, free-flow filter 28 (hollow tubular element of the downstream section), back-flow filter 29, mouthpiece filter 46 (downstream section at mouth end) and aerosol barrier tube 35. When tobacco flavor unit 21 is inserted in cavity 30 of reusable portion 20, aerosol barrier tube 35 fits over the outside surface 51 of heater elements 23 whereas back-flow filter 29, tobacco flavor material 27 and free-flow filter 28 fit into cavity 30 (thus, the heater elements externally heat the tobacco flavor unit) (Column 8, lines 20-49; Figures 3a, 4). Adjacent the mouth side of tobacco flavor material 27 is optional free-flow filter 28. The primary purpose of free-flow filter 28 is to provide structural support and facilitate attachment of carrier 36 and back-flow filter 29 to unit 21. Thus, free-flow filter 28 preferably has a low resistance-to-draw (i.e., provides for the "free-flow" of aerosol or vapor). Alternatively, if desired, a hollow tube (hollow tubular element) can be provided in its place (Column 8, lines 50-59; Figure 4).
Collins et al. does not explicitly disclose that the resistance-to-draw of the downstream section is less than about 10 mm H2O. However, Collins et al. does teach that the free-flow filter 28 preferably has a low resistance-to-draw (i.e., provides for the "free-flow" of aerosol or vapor) (Column 8, lines 50-59). Collins et al. also teaches that the downstream section may be a hollow tube instead of a free-flow filter (Column 8, lines 50-59). It would have been obvious to one of ordinary skill in the art before the effective filing date that the resistance-to-draw of the downstream section is less than about 10 mm H2O since Collins et al. explicitly states that the free-flow filter 28 preferably has a low resistance-to-draw to provide for the "free-flow" of aerosol or vapor, and that the downstream section may be a hollow tube rather than a filter, thus providing minimal or no resistance to draw.
Collins et al. does not explicitly disclose that the downstream section has a length of at least 20 mm. However, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (See MPEP § 2144.04(IV)(A)).
Claims 16-33 are rejected under 35 U.S.C. 103 as being unpatentable over England et al. (US 2019/0116874).
Claims 16 and 31-33. England et al. discloses a smoking article for use with an apparatus for heating smokable material to volatilize at least one component of the smokable material (Abstract). The article 101/301 of one example is in the form of a substantially cylindrical rod that includes a body of smokable material 103/303 (aerosol-generating element) and a filter assembly 105/305 (downstream section) in the form of a rod. The filter assembly 105/305 includes three segments, a cooling segment 107/307, a filter segment 109/309 and a mouth end segment 111/311. The article 101 has a first end 113/313, also known as a mouth end or a proximal end and a second end 115/315, also known as a distal end. The body of smokable material 103/303 is located towards the distal end 115/315 of the article 101/301. In one example, the cooling segment 107/307 is located adjacent the body of smokable material 103/303 between the body of smokable material 103/303 and the filter segment 109/309, such that the cooling segment 107/307 is in an abutting relationship with the smokable material 103/303 and the filter segment (Figures 1 and 2; [0019]). The cooling segment 107/307 (hollow tubular element) is an annular tube and is located around and defines an air gap within the cooling segment. The air gap provides a chamber for heated volatilized components generated from the body of smokable material 103/303 to flow. The cooling segment 107/307 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 whilst the article 101/301 is in use during insertion into the apparatus 1. The length of the cooling segment 107 is between 20 mm and 30 mm, such as 23 mm to 27 mm, 25 mm to 27 mm or particularly 25 mm (Figures 1-4; [0025]-[0026]). An apparatus 1 (aerosol-generating device) is arranged to heat smokable material to volatilize at least one component of the smokable material, typically to form an aerosol which can be inhaled. The apparatus 1 is a heating apparatus 1 which releases compounds by heating, but not burning, the smokable material (Figure 6; [0048]). A first end 3 is sometimes referred to herein as the mouth or proximal end 3 of the apparatus 1 and a second end 5 is sometimes referred to herein as the distal end 5 of the apparatus 1 (Figure 6; [0049]). The apparatus 1 comprises a housing 9 (body) for locating and protecting various internal components of the apparatus 1 (Figure 6; [0050]). The top panel 17 of the apparatus 1 has an opening 20 at the mouth end 3 of the apparatus 1 through which, in use, the article 101/301 including smokable material may be inserted into the apparatus 1 and removed from the apparatus 1 by a user (Figure 6; [0052]). The housing 9 has located or fixed therein a heater arrangement 23, control circuitry 25 and a power source 27 (Figure 6; [0053]). The heater arrangement 23 is generally in the form of a hollow cylindrical tube, having a hollow interior heating chamber 29 (device cavity) into which the article 101/301 comprising the smokable material is inserted for heating in use. The heater arrangement 23 may comprise a single heating element or may be formed of plural heating elements aligned along the longitudinal axis of the heater arrangement 23. The or each heating element may be annular or tubular, or at least part-annular or part-tubular around its circumference (Figure 6; [0057]).
England et al. does not explicitly disclose that the resistance-to-draw of the downstream section is less than about 10 mm H2O. However, England et al. teaches that cooling segment 107/307 (hollow tubular element) is an annular tube and is located around and defines an air gap within the cooling segment. The air gap provides a chamber for heated volatilized components generated from the body of smokable material 103/303 to flow. The cooling segment 107/307 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 whilst the article 101/301 is in use during insertion into the apparatus 1 (Figures 1-4; [0025]). It would have been obvious to one of ordinary skill in the art before the effective filing date that a resistance-to-draw of the cooling segment 107/307 (hollow tubular element) which is part of the downstream section is less than about 10 mm H2O since it is a hollow tube, thus providing minimal or no resistance to draw.
Claim 17. England et al. discloses that cooling segment 107/307 (hollow tubular element)) extends from the downstream end of the body of smokable material 103/303 (aerosol-generating element) to the mouth end of the filter assembly 105/305 (downstream section) (Figures 1-4).
Claim 18. England et al. discloses that heater arrangement 23 may comprise a single heating element or may be formed of plural heating elements aligned along the longitudinal axis of the heater arrangement 23. The or each heating element may be annular or tubular, or at least part-annular or part-tubular around its circumference (Figure 6; [0057]).
Claim 19. England et al. discloses that the temperature of the heated volatilized components that are generated from the body of smokable material is between 60° C. and 250° C ([0066]). It would have been obvious to one of ordinary skill in the art before the effective filing date that the operating temperature of the heating element may be between 180° C and 200° C to achieve the temperatures of the heated volatilized components between 60° C. and 250° C as taught by England et al.
Claim 20. England et al. discloses that a ventilation region 317 is provided in the article 301 to enable air to flow into the interior of the article 301 from the exterior of the article 301. The ventilation holes may be located in the cooling segment 307 to aid with the cooling of the article 301. In one example, the ventilation region 317 comprises one or more rows of holes, and in some embodiments, each row of holes is arranged circumferentially around the article 301 in a cross-section that is substantially perpendicular to a longitudinal axis of the article 301 (Figures 3 and 4; [0042]).
Claims 21 and 22. England et al. discloses that the rows of ventilation holes 317 are located at least 11 mm from the proximal end 313 (mouth end) of the article, more preferably the ventilation holes are located between 17 mm and 20 mm from the proximal end 313 of the article 301. The location of the ventilation holes 317 is positioned such that user does not block the ventilation holes 317 when the article 301 is in use ([0045]).
Claim 23. England et al. discloses providing the rows of ventilation holes between 17 mm and 20 mm from the proximal end 313 of the article 301 enables the ventilation holes 317 to be located outside of the apparatus 1, when the article 301 is fully inserted in the apparatus 1. By locating the ventilation holes outside of the apparatus, non-heated air is able to enter the article 301 through the ventilation holes from outside the apparatus 1 to aid with the cooling of the article 301 (Figures 6 and 7; [0046]).
Claim 24. England et al. does not explicitly disclose that the article has a ventilation level of at least about 10 percent. However, England et al. teaches that there are between one to four rows of ventilation holes to provide ventilation for the article 301. Each row of ventilation holes may have between 12 to 36 ventilation holes 317. The ventilation holes 317 may, for example, be between 100 to 500 μm in diameter (Figures 3 and 4; [0043]). It would have been obvious to one of ordinary skill in the art before the effective filing date that the number or size of the ventilation holes may be modified to achieve a desired ventilation level, such as at least about 10 percent.
Claim 25. England et al. discloses that the body of smokable material 103/303 (aerosol-generating element) is between 34 mm and 50 mm in length ([0021]). England et al. does not explicitly disclose that the body of smokable material 103/303 (aerosol-generating element) may have a length from about 10 mm to about 20mm. However, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (See MPEP 2144.04(IV)(A)).
Claim 26. England et al. discloses that the body of smokable material 103/303 (aerosol-generating element) may include one or more of tobacco per se, tobacco derivatives, expanded tobacco, reconstituted tobacco, tobacco extract, homogenized tobacco or tobacco substitutes. The smokable material can be in the form of ground tobacco, cut rag tobacco, extruded tobacco, gel or agglomerates ([0014]).
Claim 27. England et al. discloses that the body of smokable material 103 comprises tobacco. The smokable material may include an aerosol forming agent, such as glycerol ([0020]). While England et al. does not explicitly disclose that the glycerol (aerosol former) content in the body of smokable material 103 is at least about 10 percent by weight, differences in concentration generally will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical (See MPEP 2144.05(II)(A)).
Claim 28. England et al. discloses that the length of the cooling segment 107 (hollow tubular element) is at least 15 mm. In one example, the length of the cooling segment 107 is between 20 mm and 30 mm, such as 23 mm to 27 mm, 25 mm to 27 mm or particularly 25 mm ([0026]). The cross-section of the cooling segment 107 (hollow tubular element) is substantially constant (Figure 1).
Claim 29. England et al. discloses that the thickness of the wall of the cooling segment 107 (hollow tubular element) is approximately 0.29 mm ([0025]).
Claim 30. England et al. discloses that cooling segment 107/307 (hollow tubular element) is an annular tube and is located around and defines an air gap within the cooling segment. The air gap provides a chamber for heated volatilized components generated from the body of smokable material 103/303 to flow. The cooling segment 107/307 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 whilst the article 101/301 is in use during insertion into the apparatus 1 (Figures 1-4; [0025]). The cooling segment 107/307 (hollow tubular element) extends from the downstream end of the body of smokable material 103/303 (aerosol-generating element) to the downstream end of the filter assembly 105/305 (downstream section) (Figures 1-4).
Response to Arguments
Applicant's arguments filed 3/30/26 have been fully considered but they are not persuasive.
Applicant argues that Collins does not teach a downstream section comprising multiple elements while simultaneously achieving a RTD of less than 10 mm H2O. Examiner maintains that Collins teaches free-flow filter 28 (hollow tubular element of the downstream section) and mouthpiece filter 46 (downstream section at mouth end) (Column 8, lines 20-49; Figures 3a, 4) which are multiple elements of a downstream section. Collins et al. does not explicitly disclose that the resistance-to-draw of the downstream section is less than about 10 mm H2O. However, Collins et al. does teach that the free-flow filter 28 preferably has a low resistance-to-draw (i.e., provides for the "free-flow" of aerosol or vapor) (Column 8, lines 50-59). Collins et al. also teaches that the downstream section may be a hollow tube instead of a free-flow filter (Column 8, lines 50-59). It would have been obvious to one of ordinary skill in the art before the effective filing date that the resistance-to-draw of the downstream section is less than about 10 mm H2O since Collins et al. explicitly states that the free-flow filter 28 preferably has a low resistance-to-draw to provide for the "free-flow" of aerosol or vapor.
Applicant argues that reducing the RTD of the downstream section of England et al. would defeat the cooling and ventilation functions emphasized in England et al. and that the RTD of the downstream section of England would likely need to be much greater than 10 mm H2O in order for ventilating air to be pulled into the article upstream of the filter segment 309 via the ventilation regions. Examiner argues that England et al. teaches that cooling segment 107/307 (hollow tubular element) is a hollow annular tube and is located around and defines an air gap within the cooling segment. It would have been obvious to one of ordinary skill in the art before the effective filing date that a resistance-to-draw of the cooling segment 107/307 (hollow tubular element) which is part of the downstream section is less than about 10 mm H2O since it is a hollow tube, thus providing minimal or no resistance to draw.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE A WILL/Primary Examiner, Art Unit 1747
Prosecution Insights