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 .
Election/Restrictions
Applicant’s election of invention of Group I, claims 1-23, in the reply filed on 12/17/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 24-45 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Claim Objections
Claims 2,6-7 and 14 are objected to because of the following informalities: in each of the claims, numerical values should be separated from their corresponding units with a space. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 15, 17, 21 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites the limitations “the first hollow tubular body” and “the second hollow tubular body” in Claim 1. There is a lack of antecedent for the limitations in the claim.
Claim 17 recites the limitation “the cylindrical body is substantially continuous throughout its volume”. It is not clear what ‘substantially continuous” is intended to mean. Is the cylindrical body substantially continuous in composition, substantially continuous in density or substantially continuous in another property?
Claim 21 recites the limitation “a standard puffing regime” but fails to recite the steps involved in the standard puffing regime or to recite an industry standard method for the standard puffing regime.
In Claim 21, the term “use” is indefinite because it is not clear if the use refers to a use of the article, use of the non-combustible aerosol provision device, use of the system or to another use..
Claim 23 recites the limitation “a standard puffing regime” but fails to recite the steps involved in the standard puffing regime or to recite an industry standard method for the standard puffing regime.
In Claim 23, the term “use” is indefinite because it is not clear if the use refers to a use of the article, use of the non-combustible aerosol provision device, use of the system or to another use..
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 23 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 23 depends from Claim 21, but recites the same limitations as Claim 21. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
International Search Report
(WO 2020/105944 A1), (US 2021/0000180), (WO 2020/128045 A1), (US 2010/0288293), (WO 2021/123839 A1), (US 2007/0074734), (WO 2020/1009415 A1), and (EP 3818842 A1), (WO 2020/183166 A1) were cited as “X” and/or “Y” reference in the International Search Report for International Application PCT/GB2021/053236, to which the instant application claims priority.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-14 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (US 2020/0205467) in view of England et al (US 2019/0174819).
Claims 1-5 and 10: Liu discloses a smokeless cigarette having a decreased vapor temperature, in which tobacco is heated by an outer heating element, and tobacco smoke is generated by heating rather than burning to release vapor aerosol in a low-temperature heating condition (Abs, [0002], [0004], [0019]). The smokeless cigarette reads on an article for use as or as part of a non-combustible aerosol provision system. The article comprises a tobacco section comprising tobacco shreds, tobacco slices, an atomizing agent, supplementary materials, a tobacco extract, tobacco flavors and essences and a heat-sensitive capsule filled with flavoring water or water [0006]. Tobacco is an aerosol-generating material. In a disclosed embodiment, the atomizing agent consists of glycerol and ethylene glycol (reads on at least one aerosol forming material) [0031]. The article therefore comprises an aerosol-generating material comprising at least one aerosol forming material.
Referring to Fig. 3, Lu discloses that the low temperature cigarette (reads on an article) comprises a tobacco section 2 at an upstream portion of the article, a heat-resistant hollow section 3 immediately downstream of the tobacco section (reads on a hollow tubular member), a hollow filter tip housing 6 comprising a solid filter tip hollow layer 7 disposed immediately downstream of the heat-resistant hollow section (corresponds to a hollow tubular body) and a filter tip section 1 disposed Immediately downstream of the hollow filter tip housing and downstream of the tobacco section ([0022], [0025], [0033]-[0034]).
Liu discloses that a hollow section of the article comprises a circle cross-section in some embodiments [0009], therefore it would have been obvious to one of ordinary skill in the art to form the article as a cylindrical article comprising a cylindrical body as the filter tip section 1.
Liu does not disclose the distance between the downstream end of the aerosol-generating material and the upstream end of the cylindrical body. However, England discloses a consumable (article) for an aerosol generating device (Abs, [0012], [0061], Fig. 1). The article comprises a tobacco rod 1 towards an upstream end, a filter 3 towards a downstream end, a mouthpiece end 4 at the downstream end, and a hollow tubular passage 7 between the tobacco rod and the filter ([0061], [0071]). The length of the passage 7 is at least 15 mm in some embodiments [0067] to limit the temperature experienced by the heat-sensitive filter and capsule, preventing damage to these component [0067]. In the article of Liu, the temperature of the vapor entering the hollow layer for heat-resistant hollow section 4 and hollow filter tip housing 6 comprising a solid filter tip hollow layer 7 is overall lowered [0034]. Therefore, heat-resistant hollow section 4 and hollow filter tip housing 6 comprising a solid filter tip hollow layer 7 of Liu, and the passage 7 of England contribute to cooling of the aerosol to protect the filter tip from damage.
Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to form the heat-resistant hollow section and hollow filter tip housing 6 comprising a solid filter tip hollow layer 7 of Liu to have a total length between the downstream end of the aerosol-generating material and the upstream end of the cylindrical body within the claimed range in view of England to contribute to cooling of the aerosol to protect the filter tip from damage.
Liu does not disclose the thickness of the wall of the hollow tubular body. Liu does disclose that the heat-resistant hollow section housing has a wall thickness of 0.5-1.1 mm [0012]. Liu also discloses that the hollow diameter of the hollow filter tip is less than the diameter of the hollow section 4 [0034], therefore a wall thickness of the hollow tubular body would obviously be greater than the wall thickness of the heat-resistant hollow section housing, or greater than 0.5 mm (fig. 3, sections 3 and 6,7).
Claims 6 and 7: Liu does not disclose the inner diameter of the hollow tubular body or of the heat-resistant hollow section housing. However, England discloses the cross sectional diameter of the filter approximately 5-9 mm, suitably 7.5-8 mm [0026], which is the same as the diameter of the article (see Fig. 1). Therefore, the inner diameter of the heat-resistant hollow section housing is calculated by subtracting two times the wall thickness from the cross-sectional diameter to be from about 3 to 8 mm, and the inner diameter of the hollow tubular body is less than about 3 to less than 8 mm. Each of the calculated ranges overlays the corresponding claimed range. Absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to obtain inner diameters ad differences between inner diameters of the hollow tubular body and of the heat-resistant hollow section housing of Liu to be within the claimed ranges, with a reasonable expectation of success in obtaining a suitable article for use as or as part of a non-combustible aerosol provision system.
Claim 8: England discloses that the length of the tobacco rod between 34 and 50 mm [0062], which is greater than the length of the passage 7. Therefore, absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to form the article of Liu with a length of the tobacco section longer than the combined length of the heat-resistant hollow section 4 and hollow filter tip housing 6 comprising a solid filter tip hollow layer 7 with a reasonable expectation of success in obtaining a suitable article for use as or as part of a non-combustible aerosol provision system.
Claims 10 and 11: The hollow tubular body and of the heat-resistant hollow section housing of Liu are exposed to heated aerosol from the heated tobacco and serve to prevent the heat from directly reaching the filter tip 1 [0035].
Liu discloses that the heat-resistant hollow section housing is formed from a high temperature-resistant fibrous material, ceramic material, non-woven fabric or paper [0011], and is a hollow paper rod having a wall thickness of 0.8 mm in some embodiments [0035]. Since the hollow tubular body and the heat-resistant hollow section housing of Liu are both exposed to high temperature, forming the hollow tubular body comprising the same temperature-resistant fibrous material, ceramic material, non-woven fabric or paper would have been obvious to one of ordinary skill in the art.
Claim 12: England discloses forming the filter out of cellulose acetate and comprising triacetin as a plasticizer [0026]. Smoking article filters containing cellulose acetate and triacetin are well known in the art and are exposed to high temperatures from the smoke and aerosols produced in the articles. It would further have been obvious to one of ordinary skill in the art to include cellulose acetate and a triacetin plasticizer as known high temperature-resistant fibrous materials in the hollow tubular body and of the heat-resistant hollow section housing of Liu.
One of ordinary skill in the art would certainly tailor a mixture to proportions to reach desired function/properties of the product. It is by now well settled that where patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on the applicant to establish with objective evidence that the change is critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the present case, Applicants have advanced no objective evidence which establishes that using such ranges would produce anything other than expected results
Absent convincing evidence of unexpected results, determining the amount of plasticizer would have been obvious to obtain the desired properties of the article.
Claims 13 and 14: In an alternate embodiment of Liu, the hollow filter tip housing 6 and a solid filter tip hollow layer 7 are not disposed immediately downstream of the heat-resistant hollow section but instead are disposed immediately downstream of the filter tip section 1 at a downstream end of the article. In this embodiment, the hollow filter tip housing 6 comprising a solid filter tip hollow layer 7 correspond to the second hollow tubular body ([0023], [0025], [0038]-[0039], Fig. 4).
: The hollow tubular body and of the heat-resistant hollow section housing of Liu are exposed to heated aerosol from the heated tobacco and serve to prevent the heat from directly reaching the filter tip 1 [0035].
Liu discloses that the heat-resistant hollow section housing is formed from a high temperature-resistant fibrous material, ceramic material, non-woven fabric or paper [0011], and is a hollow paper rod having a wall thickness of 0.8 mm in some embodiments [0035].. Therefore, forming the hollow tubular body and the heat-resistant hollow section housing comprising high temperature-resistant paper and a wall thickness in the claimed range would have been obvious to one of ordinary skill in the art.
Claim 17 Liu does not disclose any breaks in the material of the filter, therefore it would have been obvious to obtain a filter that is substantially continuous throughout its volume.
Claim 18: as discussed with respect to claim 1, Liu in view of England discloses an article for use as or as part of a non-combustible aerosol provision system, the article .comprising an aerosol-generating material comprising at least one aerosol forming material, and a cylindrical body (filter tip) having an upstream end less than about 22 mm from a downstream end of the an aerosol-generating material. Although not explicitly disclosed, the aerosol-generating material comprising at least one aerosol forming material must be provided, and a step of disposing the cylindrical body (filter tip) such that an upstream end of the cylindrical body is less than about 22 mm from a downstream end of the aerosol-generating material would have been obvious in order to make the article.
Claim 19: Liu does not disclose a non-combustible aerosol provision device comprising a heater. Liu does disclose that the article is suitable for use with an inner core heater or a peripheral heater [0019].
England discloses a non-combustible aerosol generating device comprising a heater to heat the article ([0070], [0078], [0080]). The inventive article of Liu in view of England and a non-combustible aerosol generating device together read on a non-combustible aerosol generating system.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of England and further in view of Lisan (US 2016/0331032).
Liu and England fail to disclose a density of the hollow tubular element.
Lisan teaches a cellulose acetate hollow tubular element comprising a wall density between 0.25g/cc and 0.75g/cc, or between 0.25g/cc and 0.65g/cc or between 0.35g/cc and 0.65g/cc. Specifically, Lisan discloses "0.25 to 0.41 g/cc" (Abs, [0008]).
Absent convincing evidence of unexpected results, it would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to form the body of the hollow tubular element of Liu in view of England and further in view of Lisan having a claimed density because Lisan specifically teaches 0.24 to 0.41 g/cc to be a suitable density of material of a hollow tubular element. In the case where claimed ranges "overlap or lie inside ranges disclosed by prior art" a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Additionally, it would be obvious to combine Liu with Lisan because Liu does not teach suitable densities of hollow tubular bodies and a person of ordinary skill in the a rt would have been motivated to look to a similar reference to find suitable hollow tubular body densities. Lisan is directed to a similar smoking device with hollow tubular body sections/bodies and Lisan teaches known hollow tubular body densities that are suitable for a similar product and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success. [W]here the general conditions of a claim are disclosed in the prior a rt, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(A).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Liu in view of England and further in view of Kadiric et al (EP 2462821 A1).
Liu and England fail to disclose that the cylindrical body is circumscribed by a wrapping material, said wrapping material comprising an embossed pattern.
Kadiric discloses a smoking article comprising an aerosol-generating substrate and a mouthpiece having a filter comprising one or more segments (Abs, [0003], [0019]).
Kadiric teaches that cigarettes typically contain a cylindrical rod of tobacco surrounded by a paper wrapper and a cylindrical filter axially aligned in an abutting relationship with the wrapped tobacco rod. Conventionally, the wrapped tobacco rod and filter are joined by a band of tipping paper [0002].
Kadiric further teaches that it was previously known to provide a smoking article with a wrapper that is at least partially formed of a transparent material such that a part of the smoking article is visible through the wrapper to allow the user to observe the effectiveness of the underlying filter [0004]. However, the use of such wrappers can be unappealing to the user due to the different texture and feel of the material from that of traditional tipping material.
Kadiric provides a solution to the problem by providing an embossed, substantially transparent wrapper circumscribing at least part of the filter such that an underlying portion of the filter is visible and the embossed surface provides a more acceptable mouth feel. Particularly preferably, the wrapper is a tipping paper that circumscribes the mouthpiece and connects the mouthpiece to the aerosol-generating substrate. ([0007], [0011]-[0012]). The inventive wrapper allows the user to view the components of the mouthpiece and also observe any visible effects of the filtration of smoke as it is drawn through the mouthpiece and wherein the embossments are placed where the user’s lips are most likely to contact during use ([0013]-[0014]). Absent convincing evidence commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to circumscribe the cylindrical body of the article of Liu in view of England with tipping paper as a typical construction of smoking articles, and to provide an embossed, substantially transparent tipping paper as disclosed by Kadiric circumscribing at least part of the filter such that an underlying portion of the filter is visible and the embossed surface provides an acceptable mouth feel.
Claims 20-23 103 Liu as modified by England and further in view of Malgat et al (US 2016/0331032) and as evidenced by ISO/TR 19478-2:2015 (ISO and Health Canada intense smoking parameters)..
As discussed above, the inventive article of Liu in view of England and a non-combustible aerosol generating device together read on a non-combustible aerosol generating system. England discloses nicotine and glycerol as suitable aerosol-formers provided in a capsule but fails to disclose providing the aerosol-generating material with nicotine and glycerol.
Malgat discloses a heated aerosol-generating article for use with an aerosol-generating device (Abs). The article comprises an aerosol-forming substrate comprising nicotine in some embodiments [0030]. In other embodiments, the aerosol-forming substrate comprises nicotine ([0057], [0064]). Including nicotine or glycerol in the aerosol-generating material of Liu in view of England and further in view of Malgat would have been obvious as well-known aerosol-forming materials in the art.
The structure of the claimed article has been shown to be obvious over Liu in view of England and one of ordinary skill would have expected the performance of the article of Liu in view of England to be similar to that of the claimed article under a standard puffing regime. An industry standard puffing test is ISO/TR 19478-2:2015 (see ISO), which identifies and assesses factors impacting on the measurement of smoke TPM, NFDPM, nicotine, water, and carbon monoxide yields when increasing the intensity of the puffing regime. The ISO puffing regime would have been an obvious method to one of ordinary skill in the art to analyze the smoke yields of smoking articles. It would have been obvious to one of ordinary skill in the art to obtain claimed results from subjecting the article of Liu in view of England because, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Products of identical chemical composition cannot have mutually exclusive properties.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS R CORDRAY/ Primary Examiner, Art Unit 1748