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 16-17, and 19-30 are pending and are subject to this office action. Claims 16 and 23 are amended.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/09/2025 has been entered.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 12/09/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see 7-9, filed 12/09/2025, with respect to the rejection of claim 16 under 35 U.S.C. 103 over Malgat (WO 2017/153443 A1) in view of Hwang (US 20210000175 A1) have been fully considered and are persuasive. Applicant amended claim 16 to require that the at least one hollow tubular segment of the downstream section has a length of at least 17mm. Malgat discloses the support element (“at least one hollow tubular element of the downstream section”) may have a length of 5 to 15 mm (pg. 14 lines 31-32, pg. 15 lines 1-2). Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground of rejection is made in view of a combination of newly found prior art and previously applied prior art.
On pg. 9, Applicant argues that a person of ordinary skill in the art would not look to Hwang (US 20210000175 A1) for teachings related to cooling. However, the prior office action relied upon Hwang for disclosing a RTD of the upstream element.
The remaining arguments are directed to Malgat which was not relied upon in the rejection below.
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, 22-25, and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1, hereinafter referred to as Hwang ‘0180) in view of Barnes (US 5348027 A) and Hwang (US 20210000175 A1, hereinafter referred to as Hwang ‘0175).
Regarding claim 16, Hwang ‘0180 directed to a cigarette (3, “aerosol generating article”), 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, 0083]),
The tobacco rod (31) 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 segment”) which abuts a downstream end of the tobacco rod (31), and has a length of 7-20mm (Fig. 5B, [0070-0071]). The length taught by the prior art overlaps with the claimed range and is therefore 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), has a length of about 7 mm ([0065]), and may be a hollow tube (i.e. defining a longitudinal cavity providing unrestricted airflow, Fig. 5B, [0095]). The length taught by the prior art lies within the claimed range and is therefore considered prima facie obvious.
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 resistance to draw of the tobacco rod (31, “rod of 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 ‘0180, by providing the aerosol generating substrate with a resistance to draw of 2 to 40mmWG as taught by Barnes because both Hwang ‘0180 and Barnes are directed to smoking articles, Hwang ‘0180 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.
Hwang ‘0180 discloses the length and inner diameter of the front end pug (33, “upstream element”) can be varied to impact the draw resistance of the front end plug (33, [0095]).
Hwang ‘0180 does not explicitly disclose the resistance to draw of the front end plug (33, “upstream element”).
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 modifying the plug element of Hwang ‘0180 to have a resistance to draw less than 2 mm H2O because both Hwang ‘0180 and Hwang ‘0175 are directed to smoking articles, Hwang ‘0175 teaches the resistance to draw of the front plug 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.
Regarding claim 17, Hwang ‘0175 discloses decreasing the RTD of the upstream element results in an increased aerosol transfer amount ([0099, 0100]), as discussed above, which would motivate a person having ordinary skill in the art to modify the upstream element to have a resistance to draw of less than 1.5mm/5mm length.
Regarding claim 22, Modified Hwang ‘0180 does not explicitly disclose a combined RTD of the upstream element and the rod of aerosol generating substrate is less than 10 mmH2O.
However, Barnes discloses a smoking article where the resistance to draw of the aerosol forming substrate is 2 to 40 mm water (col. 4 lines 14-18), as discussed above.
Hwang ‘0175 discloses that decreasing the RTD of the upstream element results in an increased aerosol transfer amount, which would motivate a person having ordinary skill in the art to modify the upstream element to have a resistance to draw of less than 2mm H2O, as discussed above.
Therefore, a person having ordinary skill in the art, in view of the combination of an aerosol forming substrate with a RTD of 2 to 40mmH2O and an upstream element with a RTD of less than 2 mmH2O, would have reasonably arrived at a smoking article where the combined resistance to draw of the upstream element and aerosol forming substrate was in a range that overlaps with the claimed range of less than 10 mmH2O.
Regarding claim 23, a portion of the aerosol generating article upstream of the ventilation zone is considered to be a portion of the aerosol generating article upstream of the perforations (36, Fig. 5B). Therefore, the tobacco rod (31) is considered to be a portion of the aerosol generating article upstream of the ventilation zone.
As discussed above, Barnes discloses a smoking article where the resistance to draw of the aerosol forming substrate is 2 to 40 mm H2O which overlaps with the claimed range of between 10-12 mmH2O, and is therefore considered prima facie obvious.
Regarding claim 24, Hwang ‘0180 discloses the first filter segment (321) has a length of 7-20mm (Fig. 5B, [0070-0071]). The length taught by the prior art overlaps with the claimed range and is therefore considered prima facie obvious.
Regarding claim 25, Hwang ‘0180 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, where the second filter segment (322, “mouthpiece element”) has a length of 4-20mm ([0075]). The length taught by the prior art overlaps with the claimed range and is therefore considered prima facie obvious.
Regarding claim 27, Hwang ‘0180 discloses the tobacco rod (31) may be formed of tiny bits cut from a tobacco sheet ([0067]) which is considered to meet the claim limitation of shredded tobacco material.
Claims 19-20, 26, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20210000180 A1, hereinafter referred to as Hwang ‘0180) in view of Barnes (US 5348027 A) and Hwang (US 20210000175 A1, hereinafter referred to as Hwang ‘0175), as applied to claim 16 above, further in view of Cheong (US 20200352220 A1).
Regarding claim 19, Hwang ‘0180 discloses the inner diameter of the front end plug (33) can be varied to control the draw resistance of the article ([0095]).
Hwang ‘0180 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 an outer 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 ‘0180, in view of Barnes and Hwang ‘0175, 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 ‘0180 and Cheong are directed to aerosol generating articles, Cheong and Hwang ‘0180 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) outer 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 20, Hwang ‘0180 discloses the inner diameter of the front end plug (33) can be varied to control the draw resistance of the article ([0095]).
Hwang ‘0180 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 an outer 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 ‘0180, in view of Barnes and Hwang ‘0175, 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 ‘0180 and Cheong are directed to aerosol generating articles, Cheong and Hwang ‘01810 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) outer 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 5mm and is therefore considered prima facie obvious.
Regarding claim 26, Hwang ‘0180 discloses a second filter segment (322, “mouthpiece element”, (Fig. 5B, [0092]) having a length of 4-20mm ([0075]).
Hwang ‘0180 is silent to the draw resistance of the second filter segment (322, mouthpiece element”).
However, Cheong, directed to an aerosol generating article (400, Fig. 5, [0073-0074]), discloses:
A rear end filter segment (423, “mouthpiece element”) having a suction resistance of 1mmWG/mm to 30mmWG/mm (Fig. 5, [0080, 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 ‘0180, in view of Barnes and Hwang ‘0175, by providing the mouthpiece element with a suction resistance of 1mmWG/mm to 30mmWG/mm, as taught by Cheong, because both Hwang ‘0180 and Cheong are directed to aerosol generating articles, Hwang ‘0180 discloses a mouthpiece element (322) but is silent to the draw resistance, Cheong discloses a similar aerosol generating article having a mouthpiece element, one having ordinary skill in the art would be motivated to look to similar aerosol generating articles for workable ranges of draw resistance, and this involves applying a known range of draw resistance to a similar mouthpiece element in a similar aerosol generating article to yield predictable results.
A person having ordinary skill in the art, in view of the second filter segment (322, “mouthpiece element”, (Fig. 5B, [0092]) having a length of 4-20mm ([0075]) disclosed by Hwang and a mouthpiece suction resistance of 1mmWG/mm to 30mmWG/mm (0080, 0088]) disclosed by Cheong, could have reasonably arrived at a smoking article having a mouthpiece element with a resistance to draw that overlaps with the claimed range and is therefore considered prima facie obvious.
Regarding claim 29, Hwang ‘0180 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 ‘0180 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 ‘0180, in view of Barnes and Hwang ‘0175, by providing the front end plug with a length of 4 to 20mm as taught by Cheong, because both Hwang ‘0180 and Cheong are directed to aerosol generating articles, Hwang ‘0180 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 21 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 Barnes (US 5348027 A) and Hwang (US 20210000175 A1, hereinafter referred to as Hwang ‘0175),
as applied to claim 16 above, and further in view of Hepworth (US 20220183347 A1)
Regarding claim 21, Barnes discloses the RTD of the aerosol generating substrate is (2 to 40mm water (col. 4 lines 14-18).) and Hwang ‘0175 discloses decreasing the draw resistance of the front plug results in an increase the aerosol transfer amount ([0099, 0100]).
Hwang ‘0180, Barnes, or Hwang ‘0175 do not explicitly disclose the total resistance to draw of the aerosol generating article.
However, Hepworth, directed to an aerosol generating article (1, Fig. 1, [0058]), discloses:
An article (1) comprising a mouthpiece (2, “a downstream section”) positioned downstream of an aerosol generating substrate (3), where the mouthpiece comprises hollow tubular filters (8,4, Fig. 1, [0058-0060])
The pressure drop across the mouthpiece (2, “a downstream section”) is less than 40mmH2O which results in improved aerosol by slowing down the aerosol to reduce the temperature before reaching the downstream end of the mouthpiece (2b, Fig. 1, [0070]).
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 Barnes and Hwang ‘0175, by providing the downstream section with a resistance to draw of less than 40mmH2O as taught by Hepworth, because both Hwang ‘0180 and Hepworth are directed to aerosol generating articles, Hepworth teaches providing the downstream section/mouthpiece with an RTD of less than 40mmH2O allows the aerosol to sufficiently cool, and this involves applying a known RTD of a downstream section/mouthpiece to a similar aerosol generating article to yield predictable results.
Modified Hwang ‘0180 does not explicitly disclose the aerosol generating article has a resistance to draw between 20 and 22 mmH2O. However, Barnes discloses the RTD of the aerosol generating substrate is 2 to 40mm water (col. 4 lines 14-18), Hwang ‘0175 discloses decreasing the draw resistance of the front plug results in an increase the aerosol transfer amount which would motive a person having ordinary skill in the art to apply a RTD of less than 2mmH2O to the upstream element ([0099, 0100]), as discussed above, and Hepworth discloses a RTD of the downstream section/mouthpiece that is less than 40mmH2O([0070]). Therefore, a person having ordinary skill in the art could have reasonably arrived at a smoking article with a total resistance to draw in a range that overlaps with the claimed range of 20 and 22 mmH2O.
Claim 28 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 Barnes (US 5348027 A) and Hwang (US 20210000175 A1, hereinafter referred to as Hwang ‘0175), as applied to claim 27 above, and further in view of Bowen (US 5374869 A).
Regarding claim 28, Hwang ‘0180 is silent to the density of the shredded tobacco material in the aerosol forming substrate.
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 ‘0180, in view of Barnes and Hwang ‘0175, by using a tobacco density of 300mg/cc or more in the aerosol generating substrate as taught by Bowen because both Hwang ‘0180 and Bowen are directed to smoking articles, 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 30 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 Barnes (US 5348027 A) and Hwang (US 20210000175 A1, hereinafter referred to as Hwang ‘0175), as applied to claim 16 above and further in view of Thorens (US 20170340016 A1).
Regarding claim 30, Hwang ‘0180 discloses the tobacco rod (31) may include an aerosol generating material such as glycerin (i.e. an aerosol former, [0066]).
However, Hwang ‘0180 does not explicitly disclose the amount of aerosol former. 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 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 ‘0180, in view of Barnes and Hwang ‘0175, by providing the aerosol former in an amount 5% or greater on a dry weight basis, as taught by Thorens, because both Hwang ‘0180 and Thorens are directed to aerosol generating articles, Thorens 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.
Conclusion
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755