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
Claims 16-23, 25-26, and 29-31 are pending and are subject to this office action. Claim 16 has been amended. Claim 24 has been canceled. Claim 31 is newly added.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/26/2026 has been entered.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 08/26/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pg. 7-10, filed 08/26/2026, with respect to the rejection of claim 16 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claim 16 to require an aerosol former content of at least 10% by weight on a dry weight basis which was previously presented in now canceled claim 24, and to require the hollow tubular element have a wall thickness of less than 500 micrometers, which was not previously presented. The prior rejection of Hwang, in view of Bowen and Hepworth, does not explicitly disclose an aerosol former content of at least 10% by weight on a dry weight basis, or a hollow tubular element have a wall thickness of less than 500 micrometers. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of a combination of previously applied prior art and newly found prior art.
Therefore, the rejections below are maintained and modified based on Applicant’s amendment.
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.
Claims 16-17, 21, 25, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20220183347 A1).
Regarding claim 16, Hwang discloses a cigarette (3, “an aerosol generating article”), comprising:
A front end plug (33, “upstream element”), a tobacco rod (31, “rod of aerosol generating substrate”), a first filter segment (321), and a second filter segment (322, Fig. 4, Fig. 5B, [0061-0063, 0083]),
The tobacco rod (31, “rod of aerosol generating substrate”) may be formed of tiny bits cut from a tobacco sheet ([0067]),
The tobacco rod (31, “rod of aerosol generating substrate”) has a length of about 15mm ([0065]) which lies within the claimed range and is therefore considered prima facie obvious,
The first filter segment (321) and second filter segment (322) are considered to meet the claim limitation of a downstream section provided downstream of the rod of aerosol generating substrate.
The first filter segment (321) is a tube-shaped structure including a hollow therein (i.e. “at least one hollow tubular element”) which abuts a downstream end of the tobacco rod (31), and has a length of 7-20mm (Fig. 5B, [0070-0071]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
A plurality of perforations (36, “a ventilation zone”) are formed in an area of the outer wrapper (355, “a peripheral wall”) surrounding the first segment (321, “at least one hollow tubular segment”) allowing air to flow into the first segment (321) during a puff (Fig. 5B, [0083]).
The front end plug (33, “upstream element”) abuts an upstream end of the tobacco rod (31), and the front end plug (33) has a length of about 7 mm (Fig. 5B, [0065]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
Hwang does not explicitly disclose the average density of the shredded tobacco material in the aerosol generating substrate.
However, Hepworth, directed to an aerosol generating article (1, Fig. 1, [0060]), discloses:
An aerosol generating material (3) comprising a reconstituted tobacco material having a density of less than 700 mg/cc, which conducts heat more slowly through the material enabling a sustained release of aerosol (Fig. 1, [0092-0094]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
The tobacco material may be in cut form (i.e. a shredded tobacco material, [0095])
The tobacco material contains an aerosol forming material, such as glycerol in an amount of 10-20% by weight on a dry weight basis ([0097, 0102]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
Hepworth does not explicitly disclose an average density of tobacco between 150 to 500mmg/cc. However, Hepworth discloses a tobacco density less than 700mg/cc. A person having ordinary skill in the art would recognize that a tobacco density in the range of less than 700mg/cc would include an average tobacco density that overlaps the range of 150 to 500 mg/cc and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang by substituting the tobacco rod with aerosol forming substrate having density of less than 700 mg/cc and comprising glycerol in an amount of 10-20% by weight on a dry weight basis as taught by Hepworth because both Hwang and Hepworth are directed to smoking articles, Hepworth teaches the aerosol forming substrate provides a sustained release of aerosol, and this involves substituting one known aerosol forming substrate for another in a similar smoking article to yield the predictable results.
Hwang discloses the first filter segment (321) may be formed of cellulose acetate (Fig. 5B, [0071]).
Hwang does not explicitly disclose the first filter segment (321, “at least one hollow tubular element”) is formed of cardboard having a wall thickness of less than or equal to 500µm.
However, Hepworth, directed to an aerosol generating article (1, Fig. 1, [0060]), discloses:
A cooling element (8) abutting a downstream end of an aerosol generating material (3) formed of a carboard tube having a wall thickness of 100 µm to 1.5mm (Fig. 1, [0060, 0075-0076]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
The cooling element (8) provides a chamber for aerosol accumulation while having sufficient rigidity to withstand compressive forces during manufacture and use of the article ([0078]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Hepworth, by forming the first filter segment of a cardboard tube having a wall thickness of 100 µm to 1.5mm as taught by Hepworth, because both Hwang and Hepworth are directed to aerosol generating articles, Hwang discloses a first filter segment which may be formed of cellulose acetate and Hepworth discloses a similar hollow tubular cooling section formed of a material having sufficient rigidity for handling such cardboard, and this involves applying a known cardboard material with a known wall thickness to a similar hollow tubular cooling element in a similar aerosol generating article to yield predictable results.
Regarding claim 17, Hwang discloses the front end plug (33) may be a hollow tube having a central longitudinal cavity extending through it ([0095]).
Regarding claim 21, Hwang discloses the front end plug (33) comprises a cellulose acetate ([0077]) which is considered to be a fibrous filtration material.
Regarding claim 25, Hwang discloses the front end plug (33) is circumscribed by a wrapper (351, Fig. 5B, [0064]).
Regarding claim 29, Hwang discloses a second filter segment (322) at the upstream end of the cigarette (3) where the user inhales from (Fig. 5B, [0092]) which is considered to be a mouthpiece element.
Regarding claim 30, Hwang discloses the first filter segment (321, “at least one hollow tubular element”) has a length of 7-20mm (Fig. 5B, [0070-0071]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
Regarding claim 31, Hwang, in view of Hepworth, does not explicitly disclose a ratio of the inner diameter (ID) of the first filter segment (321, “hollow tubular element”) to an external/outer diameter (OD) of the first filter segment (321, “hollow tubular element”). However, Hwang discloses an inner diameter of the first filter segment (321) may be 2-4.5mm ([0071]) and Hepworth discloses a cooling element (8) having a wall thickness of 100 µm to 1.5mm (Fig. 1, [0060, 0075-0076]). Therefore, a person having ordinary skill in the art could have reasonably arrived at a smoking article having a hollow tubular element with an ID to OD ratio in a range that overlaps with the claimed value of 0.97, and therefore the claimed ID to OD ratio is considered prima facie obvious.
Claims 18-20, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20220183347 A1), as applied to claim 16 above, further in view of Cheong (US 20200352220 A1).
Regarding claim 18, Hwang discloses the inner diameter of the front end plug (33) can be varied to control the draw resistance of the article ([0095]).
Hwang does not explicitly disclose the wall thickness of the hollow tubular segment of the front end plug/upstream element.
However, Cheong, directed to an aerosol generating article (400, Fig. 5, [0073-0074]), discloses:
A front end filter segment (421, 520, “upstream element”) comprising a channel (510) and having a diameter of 4 to 10mm (Fig. 5, Fig. 6, [0074, 0078, 0083-0084, 0087]), and;
The shape and area of the channel may be adjusted to achieve the desired draw resistance, such as the front end filter segment (520, “upstream element”) where the ratio of the inner diameter (W1) to the outer diameter (W2) is 0.05 to 0.9 (Fig. 13, [0099-0101]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Hepworth, by providing the front end plug with an outer diameter of 4 to 10mm and an inner diameter to outer diameter ratio (ID/OD) of 0.05 to 0.9, as taught by Cheong, because both Hwang and Cheong are directed to aerosol generating articles, Cheong and Hwang both disclose that the dimensions of the front end plug can be varied to control the draw resistance of the article, and this involves applying a known front end plug dimensions to a similar aerosol generating article to yield predictable results.
A person having ordinary skill in the art, in view of a front end filter segment (421, 520) diameter of 4 to 10mm ([0078]) and an ID/OD ratio of 0.05 to 0.9 ([0099-0101]) disclosed by Cheong, could have reasonably arrived at a smoking article having an upstream element with a wall thickness that is in a range that overlaps with the claimed range of less than 1 mm and is therefore considered prima facie obvious.
Regarding claim 19, Hwang discloses the length of the front end plug (33, “upstream element) may be 7mm ([0065]) and the inner diameter of the front end plug (33) can be varied to control the draw resistance of the article ([0095]).
Hwang does not explicitly disclose a ratio of the length to the wall thickness of hollow tubular segment of the upstream element.
However, Cheong, directed to an aerosol generating article (400, Fig. 5, [0073-0074]), discloses:
A front end filter segment (421, 520, “upstream element”) comprising a channel (510) and having a diameter of 4 to 10mm (Fig. 5, Fig. 6, [0074, 0078, 0083-0084, 0087]),
The shape and area of the channel may be adjusted to achieve the desired draw resistance, such as a front end filter segment (520) where the ratio of the inner diameter (W1) to the outer diameter (W2) is 0.05 to 0.9 (Fig. 13, [0099-0101]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Hepworth, by providing the front end plug with an outer diameter of 4 to 10mm and an inner diameter to outer diameter ratio (ID/OD) of 0.05 to 9, as taught by Cheong, because both Hwang and Cheong are directed to aerosol generating articles, Cheong and Hwang both disclose that the dimensions of the front end plug can be varied to control the draw resistance of the article, and this involves applying a known front end plug dimensions to a similar aerosol generating article to yield predictable results.
A person having ordinary skill in the art, in view of the front end plug length of 7mm ([0065]) disclosed by Hwang and a front end filter segment (421, 520) diameter of 4 to 10mm ([0078]) and an ID/OD ratio of 0.05 to 0.9 ([0099-0101]) disclosed by Cheong, could have reasonably arrived at a smoking article having a ratio of the length to the wall thickness of hollow tubular segment of the upstream element in a range that overlaps with the claimed range of greater than 5 and is therefore considered prima facie obvious.
Regarding claim 20, Hwang discloses the inner diameter of the front end plug (33) can be varied to control the draw resistance of the article ([0095]).
Hwang does not explicitly disclose the inner diameter of the hollow tubular segment of the upstream element.
However, Cheong, directed to an aerosol generating article (400, Fig. 5, [0073-0074]), discloses:
A front end filter segment (421, 520, “upstream element”) comprising a channel (510) and having a diameter of 4 to 10mm (Fig. 5, Fig. 6, [0074, 0078, 0083-0084, 0087]),
The shape and area of the channel may be adjusted to achieve the desired draw resistance, such as a front end filter segment (520) where the ratio of the inner diameter (W1) to the outer diameter (W2) is 0.05 to 0.9 (Fig. 13, [0099-0101]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Hepworth, by providing the front end plug with an outer diameter of 4 to 10mm and an inner diameter to outer diameter ratio (ID/OD) of 0.05 to 9, as taught by Cheong, because both Hwang and Cheong are directed to aerosol generating articles, Cheong and Hwang both disclose that the dimensions of the front end plug can be varied to control the draw resistance of the article, and this involves applying a known front end plug dimensions to a similar aerosol generating article to yield predictable results.
A person having ordinary skill in the art, in view of the front end filter segment (421, 520) diameter of 4 to 10mm ([0078]) and an ID/OD ratio of 0.05 to 0.9 ([0099-0101]) disclosed by Cheong, could have reasonably arrived at a smoking article having an upstream element with an inner diameter that is in a range that overlaps with the claimed range of at least 4mm and is therefore considered prima facie obvious.
Regarding claim 22, Hwang discloses the inner diameter of the front end plug (33) can be varied to control the draw resistance of the article ([0095]) and the front end plug (33) has a length of 7mm ([0065]).
However, Hwang does not explicitly disclose a resistance to draw of the upstream element.
However, Cheong, directed to an aerosol generating article (400, Fig. 5, [0073-0074]), discloses:
A front end filter segment (421, 520, “upstream element”) comprising a channel (510) which is sized to achieve an appropriate suction resistance (Fig. 5, Fig. 6, [0074, 0078, 0083-0084, 0087]), and;
The suction resistance of the front end filter segment may be 1 to 30 mmWG/mm ([0088]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Hepworth, by providing the front end plug with a suction resistance of 1 to 30 mmWG/mm as taught by Cheong, because both Hwang and Cheong are directed to aerosol generating articles, Cheong and Hwang both disclose that the front end plug can be used to control the draw resistance, and this involves applying a known suction resistance to a front end plug in a similar aerosol generating article to yield predictable results.
A person having ordinary skill in the art, in view of the front end plug length of 7mm ([0065]) disclosed by Hwang and the suction resistance of 1 to 30 mmWG/mm disclosed by Cheong, could have reasonably arrived at a smoking article having an upstream element with a resistance to draw in a range that overlaps with the claimed range of less than or equal to 10 mmH2O and is therefore considered prima facie obvious.
Regarding claim 23, Hwang discloses the length of the front end plug (33) can be varied to control the draw resistance of the article ([0095]) and the front end plug (33) may have a length of 7mm ([0065]).
Hwang does not explicitly disclose the front end plug may have a length in the range of 4 to 6 mm.
However, Cheong, directed to an aerosol generating article (400, Fig. 5, [0073-0074]), discloses:
A front end filter segment (421, 520, “upstream element”) having a length of 4 to 20mm (Fig. 5, Fig. 6, [0074, 0078, 0083-0084, 0087]). The length taught by the prior art overlaps with the claimed range and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Hepworth, by providing the front end plug with a length of 4 to 20mm as taught by Cheong, because both Hwang and Cheong are directed to aerosol generating articles, Hwang discloses the length of the front end plug can be used to control the draw resistance, and this involves applying a known length to a similar front end plug in a similar aerosol generating article to yield predictable results.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20220183347 A1), as applied to claim 16 above, further in view of Barnes (US 5348027 A).
Regarding claim 26, Hwang discloses that draw resistance is an import factor in cigarette design because it impacts the amount of aerosol in the air ([0093]).
Hwang does not explicitly disclose the draw resistance of the aerosol generating substrate.
However, Barnes, directed to cigarettes (abstract), discloses:
The pressure drop of the substrate can be varied to deliver sufficient aerosol (col. 3 lines 54-65).
The substrate has a pressure drop of 2 to 40mm water (col. 4 lines 14-18). The claimed range lies within the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Hwang, in view of Hepworth, by providing the aerosol generating substrate with a resistance to draw of 2 to 40mmWG as taught by Barnes because both Hwang and Barnes are directed to smoking articles, Hwang discloses that draw resistance is an import factor in cigarette design because it impacts the amount of aerosol in the air and Barnes teaches that the pressure drop of the substrate can be varied to obtain sufficient aerosol delivery, and this involves applying a known pressure drop of a substrate to a similar smoking article to yield the predictable result of a smoking article with sufficient aerosol delivery.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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