DETAILED ACTION
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 15, 21-23, and 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Herron (EP 0 294 972 A2) in view of “List of Additives to Cigarettes”.
Claim 15: Herron teaches an aerosol-generating article, comprising: an aerosol-forming substrate (tobacco: c1 para1-5); an odor inhibition substrate (flavorant: c1 para6; c3 para2) comprising at least 10 different odor components (aromatic agent: c3 para2-7; [Column 3, paragraph 7, lists 13 different odor components, recites that the aromatic agent comprises any number of these components, and suggests having more than the number listed]); and a wrapper circumscribing at least a portion of the aerosol-forming substrate (c1 para6), wherein the odor inhibition substrate is provided on the wrapper (c3 para10). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims. Herron teaches, for example, that the odor components are coumarin, menthol, and methyl salicylate (c3 para7).
Claim 15: Herron teaches 3 odor components from the claimed list but lacks a recitation of 7 more at least.
However, “List of Additives to Cigarettes” (i.e. LAC) teaches a list of additives added to cigarettes. For example: hexanoic acid, octanal, acetoin, acetic acid, vanillin, isoamyl acetate, and acetophenone are recited.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Herron the additives of hexanoic acid, octanal, acetoin, acetic acid, vanillin, isoamyl acetate, and acetophenone in that LAC teaches, in the same art as Herron, that these additives are conventional and well-known such that one would use these additives for the inherent properties provided therein.
Claim 21: the odor inhibition substrate is provided as a band, which circumscribes a portion of the wrapper, in that such is impregnated into the wrapper forming a band (see previously recited locations of reference).
Claims 22-23: the odor inhibition substrate further comprises a solid support material impregnated with odor components in that the wrapper comprises paper wherein components making up the paper, all over the paper, will necessarily support the odor inhibition substrate wherein the wrapper is a strip/band (see previously recited locations of reference).
Claim 27: the odor inhibition substrate further comprises a portion of the wrapper with odor components adsorbed or absorbed thereon (see previously recited locations of reference).
Claim 28: the aerosol-generating article comprises the aerosol-forming substrate where any portion of the tobacco substrate is considered to necessarily be a downstream segment relative the an opposite end area of the tobacco substrate having the odor inhibition substrate thereover by way of the wrapper.
Claim 29: Herron teaches an aerosol-generating system, comprising, an aerosol-generating device (full cigarette) comprising a heater (when lit); and an aerosol-generating article according to claim 15.
Claims 19-20 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Herron (EP 0 294 972 A2) in view of “List of Additives to Cigarettes”.
Claims 19 and 20: with respect the having at least 20 (at least 30) different odor components, Herron does not specifically recite this limitation. However, the number of odor components to which one skilled in the art would consider is a function of, among other variables, the degree of masking desired, available materials on the market at proper expense, odor component interactions, and temperature and/or operational pressure. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized the number of odor components to which one skilled in the art would consider based on known variables, as those listed; and thus, the claimed value ranges cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Claims 24-25 and 26: with respect to the claimed value ranges for the distance between the support and either end of the article (claims 24-25) and for the support width (claim 26), these value to which one skilled in the art would consider is a function of, among other variables, aesthetic appeal of the wrapper, overall size of the item smoked, and desired amount of space available for the impregnation. Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the invention, to have optimized these values based on known variables, as those listed; and thus, the claimed value ranges cannot be considered critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum and workable ranges by routine experimentation,” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 195). “It is a well settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same this as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results that prior inventions.” In re Williams, 36 F.2d 436, 438 (CCPA 1929). See MPEP 2144.05 II.A.
Conclusion
The amendments and comments filed 11-12-25 have been entered and fully considered – the results of which are provided herein.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
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