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 16-36 are pending and are subject to this office action. Claims 16 is amended and claim 36 is new. Claims 28-30 are withdrawn from consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/30/2026 has been entered.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 03/30/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pg. 8-13, filed 03/30/2026, 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 the at least one hollow tubular element is formed from cardboard instead of being formed from cardboard or paper. The prior office action relied on Hwang for disclosing a hollow tubular element (first filter segment 321) formed of cellulose acetate and wrapped in a paper wrapper (353, Fig. 5B, [0071]). Hwang does not explicitly disclose the first filter segment (321) may be formed of cardboard. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of a newly found prior art.
The prior art rejections below are maintained and modified where necessitated by Applicant’s amendment.
Applicant’s arguments, see pg. 14-15, filed 03/30/2026, with respect to the provisional non-statutory double patenting rejection of claim 16 have been fully considered and are persuasive. Therefore, the provisional non statutory double patenting rejection of claims 16-18 and 25-26 has been withdrawn.
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 16-20, 25, 27, 32-24, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20230217991 A1).
Regarding claim 16, Hwang discloses a cigarette (3), 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])
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, Fig. 4, Fig. 5B, [0071])
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 front-end plug (33) abuts an upstream end of the tobacco rod (31) and the upstream end of the front-end plug (33) is the upstream end of the cigarette (3), and the front-end plug (33) has a length of about 7mm (Fig. 4, Fig. 5B, [0065]). The length taught by the prior art lies within the claimed range and is therefore considered prima facie obvious.
Perforations (36, “a ventilation zone”) are formed in an area of the outer wrapper (355) 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]).
Hwang does not explicitly disclose the distance between the perforations (36) and the upstream end of the front-end plug (33, “upstream element”). However, Hwang discloses:
The cigarette (3) may have a total length of 48mm ([0065]).
The perforations (36) may be formed 12 to 24mm away from a rear end of the filter rod (32, i.e. downstream end of the cigarette, [0084]).
Therefore, a person having ordinary skill in the art, in view of the disclosed cigarette length and position of the perforations, could have reasonably arrived at a cigarette where the distance between the upstream end of the front-end plug (33, i.e. upstream end of the cigarette) and the perforations (36) is in a range that overlaps with the claimed range of 26-33mm.
Hwang discloses the first filter segment (321) is formed of cellulose acetate (Fig. 5B, [0071, 0079]).
Hwang does not explicitly disclose the first filter segment (321, “at least one hollow tubular element”) is formed of cardboard.
However, Hepworth, directed to an aerosol generating article (1, Fig. 1A, [0050]), discloses:
A hollow cooling section (8) abutting a downstream end of an aerosol generating material (3) formed of cellulose acetate filamentary tow or a cardboard tube (Fig. 1A, [0051, 0086, 0089]), and;
The cooling section (8) is manufactured to have sufficient rigidity withstand handing during manufacturing and use of the article (1, [0086]).
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 forming the first filter segment of a cardboard tube as taught by Hepworth, because both Hwang and Hepworth are directed to aerosol generating articles, Hwang discloses a first filter segment formed of cellulose acetate and Hepworth discloses a similar hollow tubular cooling section formed of a material having sufficient rigidity for handling such as cellulose acetate or cardboard, and this involves applying a known cardboard material to a similar hollow tubular element in a similar aerosol generating article to yield predictable results.
Regarding claim 17, Hwang does not explicitly disclose the distance between the perforations (36) and the upstream end of the front-end plug (33, “upstream element”). However, Hwang discloses:
The cigarette (3) may have a total length of 48mm ([0065]).
The perforations (36) may be formed 12 to 24mm away from a rear end of the filter rod (32, i.e. downstream end of the cigarette, [0084]).
Therefore, a person having ordinary skill in the art, in view of the disclosed cigarette length and position of the perforations, could have reasonably arrived at a cigarette where the distance between the upstream end of the front-end plug (33, i.e. upstream end of the cigarette) and the perforations (36) is in a range that overlaps with the claimed range of 27-31mm.
Regarding claim 18, Hwang discloses the length of the tobacco rod (31) may be 15 mm ([0065]). The length taught by the prior art lies within the claimed range and is therefore considered prima facie obvious.
Regarding claim 19, Hwang discloses:
A second filter segment (322) positioned at the downstream end of the cigarette (3, Fig. 5B) where the user draws on the cigarette (3, [0058]), and is therefore considered to be a mouthpiece element, and;
The first filter segment (321) abuts an upstream end of the second filter segment (322, Fig. 5B), and;
The first filter segment (321) may be 7-20mm in length ([0070]) and the length of the second filter segment (322, “mouthpiece element”) is 4-20mm ([0075]). Therefore, the combined length of the first segment (321) and second segment (322) is in a range that overlaps with the claim range of 24-32 mm and therefore is considered prima facie obvious.
Regarding claim 20, Hwang discloses the front-end plug (33) may be a hollow tube having a central longitudinal cavity extending through it ([0095]).
Regarding claim 25, Hwang discloses the tobacco rod (31) may be formed of pipe tobacco, which is formed of tiny bits cut from a tobacco sheet ([0067]) which is considered to meet the claim limitation of shredded tobacco material.
Regarding claim 27, Hwang discloses a second filter segment (322) positioned at the downstream end of the cigarette (3, Fig. 5B) where the user draws on the cigarette (3, [0058]), and is therefore considered to be a mouthpiece element.
Regarding claim 32, Hwang does not explicitly disclose the volume defined by the hollow tubular element. However, Hwang discloses:
The length of the first segment (321, “hollow tubular element”) is 7 to 20mm ([0070]), and
The diameter of the hollow within the first segment (321) may be 2 to 4.5mm ([0071]).
Therefore, a person having ordinary skill in the art, in view of the disclosed hollow tubular element length and diameter of the hollow (i.e. the inner diameter of the first segment), could have reasonably arrived at a cigarette where the volume defined by the hollow is in a range that overlaps with the claimed range of at least 300 m3.
Regarding claims 33 and 34, Hwang does not explicitly disclose the wall thickness of the hollow tubular element. However, Hwang discloses:
The diameter (i.e. the outer diameter of the hollow tubular element) of the cigarette (3) may be 5 mm to 9 mm ([0065]), and
The diameter of the hollow (i.e. the inner diameter of the hollow tubular element) within the first segment (321) may be 2 to 4.5mm ([0071]).
Therefore, a person having ordinary skill in the art, in view of the disclosed outer diameter of the cigarette and the inner diameter of the first segment (321), could have reasonably arrived at a cigarette where the wall thickness is in a range that overlaps with the claimed ranges of less than or equal to 1.5mm or 0.5mm
Regarding claim 36, Hwang discloses the cigarette (3) may be used with an aerosol generating device (1) and the front-end plug (33) may prevent the tobacco rod (31) from falling out of the cigarette (3, Fig. 1, [0063]).
Hwang does not explicitly disclose the front-end plug (33) is configured to position the tobacco rod (31) at a predetermined axial location when received in a chamber of an aerosol generating device (1).
However, Hwang discloses a cigarette (3) comprising a hollow tubular front-end plug (33) positioned immediate upstream of the tobacco rod (31) which is configured to be inserted in a chamber of an aerosol generating device (1, Fig. 1).
Therefore, a person having ordinary skill in the art would reasonably expect the cavity in the hollow tubular front-end plug (33) to be capable of positioning the tobacco rod (31) at a predetermined axial location when received in a chamber of the aerosol generating device (1).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20230217991 A1), as applied to claim 20 above, further in view Malgat (US 20190075845 A1).
Regarding claim 21, 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 upstream element.
However, Malgat, directed to an aerosol generating article (10, Fig. 1), discloses:
A hollow tubular plug element (90, “upstream element”) positioned upstream of an aerosol forming substrate (20, Fig.1, [0089])
The inner diameter of the plug element is the same as the width of the susceptor (25, [0093])
The diameter of the susceptor is 1 to 5mm ([0036])
The outer diameter of the plug element is greater than 5 mm ([0021])
The wall thickness of the upstream element is interpreted as the difference between the outer diameter and inner diameter of the upstream element.
A person having ordinary skill in the art, in view of the disclosed inner diameter of the plug element relative to the susceptor width, susceptor width, and outer diameter of the plug element, would have reasonably arrived at a smoking article where the wall thickness is in a range that overlaps with the claimed range of less than 2mm.
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 the range of wall thicknesses disclosed by Malgat, because both Hwang and Malgat are directed to aerosol generating articles, Hwang discloses the inner diameter of the front end plug may be used to control the draw resistance and Malgat discloses workable ranges of plug element dimensions, and this involves applying known plug element dimensions to a similar aerosol generating article to yield predictable results.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20230217991 A1) as applied to claim 16 above, further in view of Thorens (US 20170340016 A1).
Regarding claim 22, Hwang discloses the tobacco rod (31) may include an aerosol generating material such as glycerin ([0066]).
Hwang does not explicitly disclose the aerosol former content.
However, Thorens, directed to an aerosol generating article (abstract), discloses:
A solid aerosol forming substrate containing tobacco ([0091])
The aerosol forming substrate comprising at least one aerosol former to facilitate the formation of a dense and stable aerosol ([0090]).
The aerosol-forming substrate has an aerosol former content of greater than 5 percent on a dry weight basis ([0092]). The claimed range of at least 10% 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 former in an amount 5% or greater on a dry weight basis, as taught by Thorens, because both Hwang and Thorens are directed to aerosol generating articles, Hwang teaches providing an aerosol former in an amount greater than 5% facilitates the formation of dense and stable aerosol, and this involves applying an aerosol former in a known amount to a similar aerosol generating article to yield predictable results.
Regarding claim 23, Thorens discloses the aerosol-forming substrate has an aerosol former content of greater than 5 percent on a dry weight basis ([0092]). The claimed range of less than or equal to 20% overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
Claims 24 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20230217991 A1), as applied to claim 16 above, further in view of Barnes (US 5348027 A).
Regarding claim 24, 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 routine optimization of the pressure drop of the substrate in a smoking article using routine skill in the art to yield the predictable result of a smoking article with sufficient aerosol delivery.
Regarding claim 31, 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 overlaps with 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 routine optimization of the pressure drop of the substrate in a smoking article using routine skill in the art to yield the predictable result of a smoking article with sufficient aerosol delivery.
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1) in view of Hepworth (US 20230217991 A1), as applied to claim 16 above, further in view of Bowen (US 5374869 A).
Regarding claim 26, Hwang discloses the tobacco rod (31) may be formed of pipe tobacco, which is formed of tiny bits cut from a tobacco sheet ([0067]) and 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 density of the shredded tobacco material.
However, Bowen, directed to a cigarette (abstract), discloses:
A cigarette comprising a tobacco rod where the tobacco density is at least 300 mg/cc (col. 7 lines 57-68, col. 8 lines 1-8). The tobacco density taught by the prior art overlaps with the claimed range and is therefore considered prima facie obvious.
A higher density of tobacco in the tobacco rod results in an increased resistance to draw (col. 7 lines 57-68, col. 8 lines 1-8).
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 using a tobacco density of 300mg/cc or more in the aerosol generating substrate as taught by Bowen because both Hwang and Bowen are directed to smoking articles, Hwang discloses the draw resistance of the cigarette can impact the amount of aerosol and Bowen teaches that the tobacco density is a results effective variable that impacts the draw resistance of the smoking article, and this involves routine optimization of the tobacco density of a smoking article using routine skill in the art to yield the predictable result of a smoking article with an appropriate resistance to draw.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1, hereinafter referred to as Hwang ‘0180) in view of Hepworth (US 20230217991 A1), as applied to claim 16 above, further in view of Hwang (US 20210000175 A1, hereinafter referred to as Hwang ‘0175).
Regarding claim 35, Hwang ‘0180 discloses that draw resistance is an import factor in cigarette design because it impacts the amount of aerosol in the air ([0093]).
Hwang ‘0180 does not explicitly disclose the draw resistance of the upstream element is less than 10mmH2O.
However, Hwang, ‘0175, directed to a cigarette (abstract), discloses:
A cigarette (3) comprising a front-end plug (33) upstream of a tobacco rod (31, Fig. 1, [0027]), and;
Decreasing the draw resistance of the front plug (33) results in an increase the aerosol transfer amount ([0099, 0100]).
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 ‘0180, in view of Hepworth, by providing the upstream element with a resistance to draw of less than 10mm H2O as taught by Hwang ‘0175, because both Hwang ‘0180 and Hwang ‘0175 are directed to smoking articles, Hwang ‘0180 teaches draw resistance impacts the amount of aerosol and Hwang ’0175 teaches more specifically that the resistance to draw of the front plug/upstream element is a results effective variable that directly impacts the transfer amount of aerosol, and this involves routine optimization of the resistance to draw of the upstream element using routine skill in the art to yield the predictable result of a smoking article with an increased aerosol transfer amount.
Conclusion
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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