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 .
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.
Claim 8 is 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 8 recites “said smoke extraction section (2) is made of a hard material including metal, PEEK, polytetrafluoroethylene, organic glass, acetate fiber, a paper-based material”, which as written appears to require that the smoke extraction section is made of all of the listed materials. It is unclear if applicant intends the smoke extraction section to be made of all of the listed materials or one of the listed materials. For purposes of examination, claim 8 will be interpreted as “said smoke extraction section (2) is made of one of a hard material including metal, PEEK, polytetrafluoroethylene, organic glass, acetate fiber, or a paper-based material”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, and 5-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Nanasaki (WO2021002309A1) (claims are mapped to the English translation provided).
Claim 1. Nanasaki discloses an electric heating type device (closed tobacco heating appliance) including a heater member, a battery unit serving as a power source for the heater member, and a control unit for controlling the heater member, and a non-combustion heating type inserted so as to come into contact with the heater member ([02]). The non-combustion-heated tobacco comprises a tobacco rod portion 10 (tobacco section) and a mouthpiece portion, and these members being wrapped with a paper 12 (external rolling material). The mouthpiece portion includes a cooling portion 15 (smoke extracting section) and a filter portion 16 (functional tip section) ([07]; [55]; Figure 3). The cooling portion 15 (smoke extracting section) has a cylindrical shape having a cavity 17 (cavity structure). The cooling unit 15 has a plurality of openings 18 (sidewall through hole), the plurality of openings 18 are arranged in the circumferential direction of the outer peripheral surface of the cooling unit 15. Openings 18 (sidewall through hole) are provided in the paper 12 in the cooling portion 15 (smoke extracting section) region to allow air flow into the cooling portion 15 (smoke extracting section) from the outside during use ([56]-[58]; Figures 3 and 4). The electric heating type tobacco product is an electric heating type device 2 includes a heater member 23, a battery unit as a power source of the heater member, and a control unit for controlling the heater member. The mode of the electrically heated tobacco product may be a mode of heating the outer peripheral surface of the non-combustion heating type tobacco as shown in Fig. 5, or it may be a mode of heating from the inside of the cigarette as shown in Fig. 6. When the non-combustion heating type tobacco 1 is inserted into the electric heating type device 2, the entire outer peripheral surface of the tobacco rod portion comes into contact with the heater member 23 of the electric heating type device 2 ([60]; Figures 5 and 6).
Claim 2. Nanasaki discloses that the cavity 17 (cavity structure) has a circular cross section (Figure 4).
Claim 5. Nanasaki discloses that the angle between the openings 18 (sidewall through hole) and the central axis of the cavity 17 (cavity structure) is 90º (Figure 4).
Claim 6. Nanasaki discloses that the diameter of the opening 18 through the paper 12 is the same as the opening 18 through the cooling portion 15 (smoke extracting section) (Figure 4).
Claim 7. Nanasaki discloses that the tobacco rod portion 10 comprises a tobacco filling wrapped with rolling paper. The tobacco filling comprises a plurality of tobacco sheets ([37]-[39]). The composition of the rolling paper may comprise cellulose fiber paper, such as, hemp or wood or a mixture thereof ([51]). The basis weight of the wrapping paper is usually 20 to 45 g / m2, preferably 25 to 40 g / m2. Within this range, appropriate strength can be maintained. The air permeability of the wrapping paper is usually 0 to 120 CORESTA units, preferably 5 to 100 CORESTA units, and more preferably 10 to 80 CORESTA units. Within this range, appropriate strength and taste can be maintained ([54]).
Claim 8. Nanasaki discloses that the cooling portion 15 (smoke extracting section) is made by processing thick paper into a cylindrical shape ([56]).
Claim 9. Nanasaki discloses that the tobacco product is a non-combustion heat-not-burn tobacco 1 product ([01]-[05]).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Nanasaki (WO2021002309A1) in view of D’Ambra et al. (US 2023/0090088).
Claim 3. Nanasaki discloses the heated tobacco product of claim 1 but does not explicitly disclose that the cavity 17 (cavity structure) has an annular platform type cavity formed by sections with different diameters.
D’Ambra et al. discloses an aerosol-generating article 10 comprising intermediate hollow section 50 made up of support element 22 and the aerosol-cooling element 24 ([0315]; Figure 1). The support element 22 comprises a first hollow tubular segment 26. The first hollow tubular segment 26 is provided in the form of a hollow cylindrical tube made of cellulose acetate. The first hollow tubular segment 26 defines an internal cavity 28 that extends all the way from an upstream end 30 of the first hollow tubular segment to an downstream end 32 of the first hollow tubular segment 20. The internal cavity 28 is substantially empty, and so substantially unrestricted airflow is enabled along the internal cavity 28. The first hollow tubular segment 26—and, as a consequence, the support element 22—does not substantially contribute to the overall RTD of the aerosol-generating article 10 ([0316]; Figure 1). The first hollow tubular segment 26 has a length of about 8 millimetres, an external diameter of about 7.25 millimetres, and an internal diameter (D.sub.FTS) of about 1.9 millimetres ([0317]; Figure 1). The aerosol-cooling element 24 comprises a second hollow tubular segment 34. The second hollow tubular segment 34 is provided in the form of a hollow cylindrical tube made of cellulose acetate. The second hollow tubular segment 34 defines an internal cavity 36 that extends all the way from an upstream end 38 of the second hollow tubular segment to a downstream end 40 of the second hollow tubular segment 34. The internal cavity 36 is substantially empty, and so substantially unrestricted airflow is enabled along the internal cavity 36. The second hollow tubular segment 28—and, as a consequence, the aerosol-cooling element 24—does not substantially contribute to the overall RTD of the aerosol-generating article 10 ([0318]; Figure 1). The second hollow tubular segment 34 has a length of about 8 millimetres, an external diameter of about 7.25 millimetres, and an internal diameter (D.sub.STS) of about 3.25 millimetres ([0319]; Figure 1).
A reduction in the length of the aerosol-cooling element is possible due to the optimised effectiveness of the hollow tubular segment forming the aerosol-cooling element in the cooling and nucleation of the aerosol. The reduction of the length of the aerosol-cooling element advantageously reduces the risk of deformation of the aerosol-generating article due to compression during use, since the aerosol-cooling element typically has a lower resistance to deformation than the mouthpiece. Furthermore, the reduction of the length of the aerosol-cooling element may provide a cost benefit to the manufacturer since the cost of a hollow tubular segment is typically higher per unit length than the cost of other elements such as a mouthpiece element ([0070]). It would have been obvious to one of ordinary skill in the art before the effective filing date to use the support element 22 and the aerosol-cooling element 24 of D’Ambra et al. instead of the cavity 17 (cavity structure) of Nanasaki because the presence and structure of the support element 22 allows for a reduced length aerosol-cooling element 24 which in turn reduces the risk of deformation and compression during use, and also provides a cost benefit as taught by D’Ambra et al.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nanasaki (WO2021002309A1) in view of Vale (US 2021/0000162).
Claim 4. Nanasaki discloses the heated tobacco product of claim 1 but does not disclose that the cavity 17 (cavity structure) comprises a plurality of channels evenly distributed penetrating in an axial direction.
Vale discloses an aerosol-generating article comprising an aerosol-cooling element comprising an extruded member 100 defining one or more pathways therethrough. The internal surface 102 of the pathways 110 comprises surface irregularities which may increase the thermal transfer of the aerosol-cooling element with surrounding air (Abstract; [0087]; Figures 1 and 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the cooling unit 15 of Nanasaki to have a plurality of pathways 110 such as that of the cooling element of Vale in order to increase the surface area comprising surface irregularities exposed to the aerosol in order to thereby increase the thermal transfer of the aerosol-cooling element with surrounding air as taught by Vale ([0087]).
Response to Arguments
Applicant’s arguments, filed 11/10/25, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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