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 16-32 are pending and are subject to this Office Action. Claims 31-32 are withdrawn as being directed to a non-elected invention.
Response to Arguments
Applicant' s arguments, see pages 2-9, filed 08/04/2026, with respect to the rejection(s) of claims 16-32 under 35 U.S.C. 103, have been fully considered and are not persuasive.
On page 3, the Applicant argues against the 35 U.S.C. 112(a) rejection regarding claims 16-30 because the Applicant claims the Specification provides substantial guidance regarding the fluid permeability properties, concrete temperature conditions, and that the Office Action did not explain why evaluating permeability at the disclosed temperatures would involve anything beyond routine testing by the person of ordinary skill in the art.
The Examiner respectfully disagrees. The potential number of compositions that have a flavor material configured to have fluid permeability transition temperatures are extensive absent any specific examples or compositions provided within the claim. All that is required of the material is that it is a gel composition, which leaves the number of compositions that can potentially have the broad and latent property of a temperature-based permeability, immense, and goes well beyond routine testing by one of ordinary skill in the art. It would require analyzing every possible gel composition/flavour material producing undue experimentation and a burden to recreate the vaguely claimed property. There is still an extensive number of potential materials/compositions and therefore the 112(a) enablement rejection stands.
On pages 3-4, the Applicant further argues that the Specification provides examples of suitable gel compositions and that the Office Action discounts those examples because the compositions contain multiple components and the claims do not separately recite each component, and therefore undue experimentation is not established.
The Examiner respectfully disagrees. While there are a few examples of gel compositions that may comprise components including glycerine and/or agar, these examples are broad and the claimed composition is not limited to only these examples. Therefore, there would be an undue amount of experimentation to recreate the claimed composition with any material comprising an ability to be permeable based on the broad recitation of transition temperatures.
On pages 4-5, the Applicant further argues that the Office Action does not identify specific technical information allegedly missing from the Specification and instead asserted that there are numerous potential materials requiring undue experimentation, which is not the enablement inquiry since one of ordinary skill in the art does not need to identify every theoretical possible gel composition that exhibits the permeability transition temperature.
The Examiner respectfully disagrees. The Examiner notes that the 112(a) rejection was made because determining workable gel compositions for the claimed article would involve undue experimentation and the Applicant’s disclosure is vague and does not provide sufficient information as to what gel compositions would be suitable for the claimed article. A gel is not narrow in scope and is instead a very broad material not limited by the disclosure. There would be undue experimentation required to recreate what is claimed, as it is not limited to potential examples in the specification, and there does not appear to be enough guidance in the specification to allow one of ordinary skill to reasonably determine a trend or reasonable expectation of what gel compositions would and would not work in the claimed article.
On pages 5-6, the Applicant further argues that the flavor substrate, permeability control element and spanning element are treated collectively even though the claims do not recite identical subject matter for each of those elements and that they recited additional elements and functions in the dependent claims.
The Examiner notes that the flavor substrate, permeability control element, and spanning element do not have separate functions as the Applicant claims, and instead both in the dependent claims and in the disclosure have the same functions and clearly the same materials (page 19). The additional elements have the same function as the flavor substrate and therefore are treated the same as there is nothing in the claims or specification that differentiates them. The Specification describes both the spanning element and the flavor substrate as permeability control elements for regulating airflow (page 25).
Furthermore, if the flavor substrate, permeability control element, and spanning element all appear to have the same composition, in accordance with the specification, but somehow perform different functions without any compositional changes, there would be additional 112 issues. Therefore, the rejection is maintained and provided below.
On page 6, the Applicant further argues that the Office Action appears to equate increased flowability or conversion to a sol with fluid permeability, and that these are different properties because flowability describes whether a material itself flows and permeability describes whether a fluid passes through the material.
The Examiner respectfully disagrees.
First, the examiner notes that there are no arguments regarding Liu's rejection of claim 16 and therefore for those reasons alone the rejection stands.
Furthermore, Terao discloses “the present invention addresses the problem of providing a gel-form thermoreversible composition for a smoking article that has high viscosity and low flowability at normal temperature but is fluidized with an increase in its temperature, easily aerosolized with heat, and presents a good smoking flavor” ([0013]) and teaches a gel composition comprising glycerin can provide this thermoreversible composition ([0014]). Therefore, it would be obvious to one of ordinary skill in the art that the gels flowability and the fact that it is “fluidized” is clearly a fluid permeable material that passes on to the user in order to be “aerosolized” and provide a “good smoking flavor”.
Terao further discloses the gel composition generates an aerosol and provides a flavor and taste component ([0075]). Therefore, Terao clearly teaches a fluid permeable material.
Furthermore, the Examiner notes that the claimed fluid permeable material is a latent property, and a mere recognition of a gel composition that performs a known property in the art does not render the claimed property nonobvious. See MPEP 2145 II. Since there is no claimed gel composition and the claims are not enabled by the disclosure, references can only be relied upon that would reasonably read on or teach the latent property since the actual contents of the gel composition are not known.
On page 7, the Applicant further argues that the combination of Liu and Terao does not explain why a composition selected to generate aerosol through heating would necessarily function as a temperature-responsive airflow control material because Terao does not describe positioning the composition as a discrete flavor substrate downstream of a tubular element.
The Examiner respectfully disagrees. Terao is not relied upon to teach the location of the flavor substrate since Liu teaches this, and therefore does not need to teach what the Applicants arguing. Terao is merely relied upon to teach a similar gel composition (both comprising glycerine) has thermos-reversible properties and it would be easy to make the gel of Liu, which is already known in the art to be a thermos-reversible material, a thermos-reversible material with temperature fluid properties.
On page 7, the Applicant further argues that the Office Action does not provide evidence supporting the assertion that heating a gel causes it to stretch and expand in a manner that permits air to pass through it.
The Examiner respectfully disagrees. Fluid permeability is a latent and inherent property of a gel, and it is obvious to one of ordinary skill in the art that a gel is a thermos-reversible material with fluid permeability properties. Additionally, Terao teaches fluid/aerosol can pass through to a user during heating, further making obvious that a fluid permeable gel is in fact known and obvious in the art.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 16-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an article comprising an aerosol-forming substrate, a tubular element, and a fluid permeable material upon heating, does not reasonably provide enablement for all gel compositions that would be included in the claimed flavor substrate, permeability control element, and the spanning element. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737,
8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue"(MPEPE 2164.01 (a)). These factors are: (1) the breadth of the claims, (2) the nature of the invention, (3) the state of the prior art, (4) the level of one of ordinary skill, (5) the level of predictability in the art, (6) the amount of direction provided by the inventor, (7) the existence of working examples, and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. The factors are discussed below as they apply to the instant invention.
Breadth of the claims: the elements “flavor substrate”, “permeability control element”, and “spanning element” all appear to be gel compositions and are extremely broad and not limited to any specific components. It is unclear what constitutes a flavor substrate, permeability control element, and a spanning element, as well as what differentiates them from one another as they all appear to be materials that are permeable at certain temperatures and fluid impermeable at others. The scope of what is claimed is extremely vast because the components are not limited by a definition or examples, the claims encompass any gel component or component that can be fluid permeable and fluid impermeable based on temperature, and there is an extensive number of potential materials for these elements.
The nature of the invention is directed to a smoking article comprising a material that is thermos-reversible to aid or block fluid from continuing through the article.
The state of the prior art discloses a similar smoking article comprising a similar gel material that reads on flavor substrate and its claimed qualities. For example, Liu discloses a smoking article comprising a gelatin layer (i.e., flavor substrate) within an outer airflow channel ([0094]).
The level of one of ordinary skill in the art is considered to know materials that are thermos-reversible and useful in smoking articles, however one of ordinary skill in the art would not know all the possible components included in the flavor substrate/spanning element/permeability control element, and which type of thermo-reversible materials are suitable for each element placed in the article.
The amount of direction provided by the inventor regarding the materials included is limited and appears to only provide for specific gel compositions comprising primarily glycerine. However, the claims are not limited to those gel compositions and it is not clear as to whether the disclosed compositions are necessarily for the invention to be practiced.
The instant specification provides examples of gel compositions, but the examples are limited to very specific compositions having numerous components and it is not clear whether the claimed elements require those components or not.
There would be undue experimentation required for one of ordinary skill in the art to put the invention into practice and determine what compositions would be suitable for the claimed article and what compositions would be suitable for forming a workable article as claimed by the Applicant.
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 factual inquiries 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(s) 16-22 and 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO-2020098320-A1, hereinafter referring to the English Translation provided), and further in view of Terao (US-20170340005-A1).
In regards to claim 16, Liu, directed to a cigarette for circumferentially heated non-combustible cigarettes, discloses the cigarette (i.e., aerosol-generating article) comprising:
a downstream end (near element 4) and an upstream end (end of element 1) (Figure 1),
The aerosol-generating article defining a longitudinal direction between the upstream and downstream end (Figures 1-5), the aerosol-generating article comprising:
A smoke-generating core substrate 1 (i.e., aerosol generating substrate) ([0009]);
A tubular element 2 disposed downstream of the aerosol-forming substrate and extending along the longitudinal direction (Figure 5), the tubular element comprising a ventilation hole 9 (i.e., air inlet);
And a filter rod unit 3 comprising a cavity 8 comprising flavoring beads or flavoring gel (i.e., flavor substrate) and a gelatin 10 (i.e., also a flavor substrate) that is disposed within the tubular element, all downstream the air inlet (Figures 1-5, [0029], and [0094]). The flavor substrate comprises a flavor material ([0029] and [0094]).
Liu does not explicitly disclose “a flavor material configured to be fluid permeable when a temperature of the flavor material is equal to or greater than a permeability transition temperature of the flavor material, and being configured to be substantially fluid impermeable when the temperature of the flavor material is lower than the permeability transition temperature of the flavor material.” However, Liu teaches a similar aerosol-generating article comprising all the components required of claim 1 and further teaches the article comprising a gel flavoring material in the same location claimed with similar function and properties to what is claimed (Figure 1 and [0029]). Further, it is known to one of ordinary skill in the art that as a gel is heated (i.e., at or greater than the permeability transition temperature), the gel stretches and expands, allowing air to pass through (i.e., fluid permeable), and therefore it would be obvious to one of ordinary skill in the art that the gel would be fluid permeable at a permeability transition temperature and is therefore considered prima facie obvious. In addition, it is known to one of ordinary skill in the art that gels can be thermos-reversible and additionally at non-operating temperature, the gel would be in its natural form, therefore it would be further obvious to one of ordinary skill in the art that the gel would be substantially fluid impermeable at temperatures lower than the permeability transition temperature of the flavor material, such as an article not being heated/operated.
Additionally, Terao directed to heat reversible compositions for smoking goods that are gel like at normal temperatures teaches gel compositions for smoking articles are known to be thermo-reversible (abstract [0011]).
Terao discloses a gel-form thermo-reversible composition for a smoking article that has high viscosity and low flowability at normal temperature but is fluidized with an increase in its temperature, easily aerosolized with heat, and presents a good smoking flavor ([0013]).
Terao further discloses that a thermo-reversible gel means the gel has a sol-form at 70 degrees Celsius or more and has a gel-form at 60 degrees Celsius or less (i.e., fluid permeable transition temperature) ([0037]).
Terao further discloses the gel-form is a state in which the composition loses its flowability unlike the sol-form which prevents the composition from scattering ([0038]) and the thermos-reversible gel allows the composition to be easily aerosolized with heat because it is fluidized with an increase in temperature and provides a good smoking flavor ([0013]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the gel of Liu a thermo-reversible gel as taught by Terao, because both are directed to gel compositions for smoking article, Liu teaches thermo-reversible gels are known in the art and easily aerosolize components when exposed to heat because they fluidize with the increase in temperature ([0013]), and this merely involves applying a known technique of using a thermo-reversible gel in smoking articles, especially when the prior art is silent to the specific thermodynamics of the gel, of a similar device to yield predictable results.
The Examiner further notes that the Applicants instant specification states a: “As used herein, "thermo-reversible" refers to a material, such as a flavor material, whose properties (in particular, the permeability) may be reversed to a former state by heating or cooling the material to the temperature corresponding to such former state. In particular, if the material is at a first temperature below its permeability transition temperature, such that the material has a first permeability at which the material is substantially fluid impermeable, then heated at or above its permeability transition temperature, such that the material reaches a second permeability at which the material is fluid permeable, and finally the material is cooled to the first temperature, the permeability of the material is reversed to substantially the first permeability. Likewise, if the material is at a first temperature at or above its permeability transition temperature, such that the material has a first permeability at which the material is fluid permeable, then cooled below its permeability transition temperature, such that the material reaches a second permeability at which the material is substantially fluid impermeable, and finally the material is heated to the first temperature, the permeability of the material is reversed to substantially the first permeability.” Therefore, a thermos-reversible gel does in fact read on what is claimed and make obvious the permeability functionality of the flavor substrate as claimed.
In regards to claim 17, Modified Liu discloses an airflow path created in the tubular element ([0037]) establishing at least one embodiment with uninterrupted fluid communication between the upstream end and a downstream end of the tubular element (Figure 1).
Modified Liu does not explicitly disclose the flavor substrate is further configured to allow a fluid flowing along the airflow channel to flow downstream of the flavor substrate when the temperature of the flavor material is equal to or greater than a permeability transition temperature of the flavor material and to prevent a fluid flowing along the airflow channel from flowing downstream of the flavor substrate when the temperature of the flavor material is lower than the permeability transition temperature of the flavor material.
However, Modified Liu discloses a thermos-reversible gel composition that would be obvious to one of ordinary skill in the art would be substantially fluid permeable at temperatures greater than or equal to the permeability transition temperature of the flavor material and fluid impermeable at temperatures below the transition temperature as discussed in claim 16 above.
It would further be obvious to one of ordinary skill in the art that the gel composition at temperatures below the permeability transition temperature would at least partially prevent fluid flowing along the airglow channel from flowing downstream of the flavor substrate and allow fluid to flow downstream when heated into a liquid, therefore it is a considered a prima facie obvious limitation of the claim.
In regards to claim 18, Modified Liu discloses the flavor material of the substrate is thermos-reversible (Terao [0013]).
In regards to claim 19, Modified Liu further discloses that a thermo-reversible gel means the gel has a sol-form at 70 degrees Celsius or more (i.e., fluid permeable transition temperature) (Terao [0037]). The range disclosed by the prior art overlaps the claimed range of the permeability transition temperature of the flavor material being between 70 degrees Celsius and 80 degrees at Celsius, and is therefore considered prima facie obvious.
In regards to claims 20-22, Modified Liu discloses a thermos-reversible gel composition that would be obvious to one of ordinary skill in the art would be substantially fluid permeable at temperatures greater than or equal to the permeability transition temperature of the flavor material and fluid impermeable at temperatures below the transition temperature.
While Modified Liu does not explicitly disclose the resistance to draw of the article when the flavor material is fluid permeable, and therefore does not disclose the resistance to draw being at least 10 mm H2O, at least 20 mm H2O, and at least 30 mm H2O, greater than a resistance-to-draw of the article when the temperature of the flavor material is lower than the permeability transition temperature of the flavor material, it would have been obvious to one of ordinary skill in the art that prior to heating the article, the resistance to draw would be higher because the gel material is not fluid permeable and therefore is not going to allow the airflow to easily pass through the article and thus create a higher RTD.
Further, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the resistance to draw of the article below the permeability transition temperature since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed resistance to draw is critical and has unexpected results. In the present invention, one would have been motivated to optimize the resistance to draw of the article motivated by the desire to reduce the flowability of smoking article materials during transportation so that the elements are not scattered (Terao [0009]-[0010]).
In regards to claim 25, Liu discloses Figure 5 which appears to illustrate two different tubes split by a flavor substrate 10 (i.e., an inner and outer tube) wherein an outer airflow channel would exist where the flavor substrate is and an inner airflow channel exists where the cavity is, the outer airflow channel delimited by the outer and inner tubes and the inner airflow channel delimited by the inner tube. Refer to Figure 5 annotated by the Examiner provided below.
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Liu further discloses the outer tube disposed around the inner tube (Figure 5) and the at least inner airflow channel configured to allow the aerosol generated from the substrate to flow towards the mouth-end of the device ([0036]).
In regards to claim 26, Liu discloses an embodiment wherein the flavor substrate 10 is located within the outer airflow channel of the outer tube ([0094]). Refer to Figure 5 annotated by the Examiner provided above.
In regards to claim 27, Liu discloses a gelatin 10 (i.e., acts as both the flavor substrate and the permeability control element) wherein it would be obvious to one of ordinary skill in the art that the gelatin would be a fluid permeable at temperatures above the gelatin transition temperature and fluid impermeable at temperatures below it, as explained in independent claim 16 above.
Liu further discloses the permeability control element located within the outer airflow channel (annotated Figure 5) and again would obviously prevent fluid from flowing down the airflow channel when the temperatures are below the transition temperature and would be fluid permeable and allow fluid to flow downstream when the temperatures are above it as described in previous dependent claims. The gel is a thermos-reversible material and thus the fluid permeability properties are inherent in gel compositions.
In regards to claim 28, Liu discloses the flavor substrate is a permeability control element (the substrate acts as a permeability control element when located in the airflow channel) (Figure 5).
In regards to claim 29, Liu discloses the gelatin (i.e., spanning material) downstream of the air inlet. Refer to annotated Figure 5 provided below.
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In regards to claim 30, Liu discloses the aerosol-generating article further comprising a filter rod unit 3 or filter tip 4 (both read on “filter” individually and/or together) downstream of the tubular element (Figures 1-5 and [0029]).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO-2020098320-A1, hereinafter referring to the English Translation provided) in view of Terao (US-20170340005-A1) as applied to claim 16 above, and further in view of Lord (US-20210315264-A1).
In regards to claim 23, Modified Liu is silent regarding the length of the smoking article and therefore does not explicitly disclose a distance between the upstream end of the aerosol-forming substrate and the downstream end of the flavor substrate less than about 40 mm.
Lord directed to a smoking substitute consumable comprising an aerosol-forming substrate, tubular elements, and a flavor substrate (abstract and Figure 1) discloses the aerosol-forming substrate may have an axial length of between 10 and 15 mm ([0051]).
Lord further discloses the length of the first cylindrical body (i.e., tubular element) is from 10 and 15 mm ([0068]) and the length of the second cylindrical body is from 8 to 15 mm ([0059]), wherein the second cylindrical body comprises the flavor substrate ([0165]). The resulting range in length of the upstream end of the aerosol-generating substrate to the downstream end of the flavor substrate is from 28 to 45 mm.
The range disclosed by the prior art overlaps the claimed range of a distance between the upstream end of the aerosol-forming substrate and the downstream end of the flavor substrate is less than about 40 mm, and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious to modify Modified Liu by making the distance between the upstream end of the aerosol-forming substrate and the downstream end of the flavor substrate less than about 40 mm, as taught by Lord, because one of ordinary skill in the art would look to a similar reference for a distance of known components in an aerosol-generating article, especially when the original prior art is silent to one, and this merely involves applying a known distance of similar elements of a similar article to yield predictable results.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (WO-2020098320-A1, hereinafter referring to the English Translation provided) in view of Terao (US-20170340005-A1) as applied to claim 16 above, and further in view of Matsuura et al. (US-6089857-A).
In regards to claim 24, Liu discloses the air inlet comprising a plurality of holes disposed on the tubular element ([0029]), but does not explicitly disclose the article comprising a regulating member being movable relative to the tubular element such that the regulating member is configured to vary a size of the air inlet.
Matsuura directed to a flavor generation heater for a smoking article (column 1, lines 56-66), discloses a plurality of through holes 34 (i.e., air inlet) are formed in body 32 (i.e., tubular element) to allow a gas flow path (column 4, lines 1-4).
Matsuura further discloses an embodiment comprising an adjusting ring (i.e., regulating member) having a plurality of holes 148 (i.e., the air inlet) is disposed on the heat-insulating tube 116 (i.e., tubular element) wherein the position of the adjusting ring can be adjusted with respect to the outer air inlet holes such that the effective rate of the outer air inlet holes is adjusted which changes the amount of flavor contained in the gas and the temperature of the gas that reaches the suction port (column 6, lines 1-9).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Liu by making the air inlet further comprise an adjusting ring, as taught by Matsuura, because all are directed to smoking articles, Matsuura teaches the adjusting ring moves to change the temperature of the gas throughout the article (column 6, lines 1-9), and this merely involves applying a known technique of using an adjusting member of a similar article to yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16-19 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-19, 21-22, 24, 27-30 of U.S. Application No. 18/264,282. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims disclose an aerosol-generating article having an upstream end and a downstream end, the aerosol-generating article defining a longitudinal direction between the upstream end and the downstream end, the aerosol-generating article comprising:
an aerosol-forming substrate; a tubular element disposed downstream of the aerosol-forming substrate and extending along the longitudinal direction;
having an upstream end and a downstream end, the aerosol-generating article defining a longitudinal direction between the upstream end and the downstream end, the aerosol-generating article comprising: an aerosol-forming substrate; a tubular element disposed downstream of the aerosol-forming substrate and extending along the longitudinal direction, the tubular element comprising an inner tube and an outer tube, the outer tube being disposed around the inner tube, wherein an outer airflow channel is longitudinally delimited by the inner tube and the outer tube, wherein an inner airflow channel is longitudinally delimited by the inner tube, and wherein at least the inner airflow channel is configured for substrate aerosol to flow towards the downstream end;
a flavor substrate disposed downstream of the aerosol-forming substrate,
and at least one element comprising a gel composition and configured to be substantially fluid impermeable when the temperature of the at least one permeability control element is lower than the permeability transition temperature of the permeability control element,
The rejected claims differ from the conflicting claims in that co-pending U.S. Application No. 18/264,282 discloses additional elements such as the tubular element having an upstream end and a downstream end, the aerosol-generating article defining a longitudinal direction between the upstream end and the downstream end, the aerosol-generating article comprising: an aerosol-forming substrate; a tubular element disposed downstream of the aerosol-forming substrate and extending along the longitudinal direction, the tubular element comprising an inner tube and an outer tube, the outer tube being disposed around the inner tube, wherein an outer airflow channel is longitudinally delimited by the inner tube and the outer tube, wherein an inner airflow channel is longitudinally delimited by the inner tube, and wherein at least the inner airflow channel is configured for substrate aerosol to flow towards the downstream end (I), at least one permeability control element (II), the control element is radially confined between the inner tube and the outer tube (III), and wherein the at least one permeability control element is disposed within the outer airflow channel (IV).
However, elements (I), (II), and (IV) are all taught in the dependent claims of the rejected application and all the components of independent claim 16 of the rejected claim are within the independent claim 16 of the co-pending application.
Element (III) is disclosed and made obvious by the rejected claims drawings and is therefore considered an obvious limitation of the application. Therefore, all elements of the rejected claims are present and obvious over the conflicting claims.
Claim 16 is obvious over claims 16-17 and 29-30.
Claim 17 is obvious over claim 17.
Claim 18 is obvious over claim 28.
Claim 19 is obvious over claim 17.
Claim 25 is obvious over claims 16-17.
Claim 26 is obvious over claim 18.
Claim 27 is obvious over claims 16-17.
Claim 28 is obvious claim 19.
Claim 29 is obvious over claims 21-22 and 24.
Claim 30 is obvious over claim 27.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Beard (US-20120255569-A1) directed to a smoking article comprising a filtered cigarette comprising a tubular element in the filter, discloses an aerosol-generating substrate and a tubular element (abstract and [0006]).
Beard further discloses the tubular element 38 comprising one or more tubes with tube walls extending therethrough, wherein the tube (i.e., inner tube) provides a passageway for mainstream smoke to pass through the tubular element (i.e., inner airflow path) and an additional tube sleeved outside of the inner tube (i.e., outer tube) comprising a channel (i.e., outer airflow path) ([0059]-[0061]).
Beard further discloses the tubes allow for further inclusion of filter material ([0065]-[0067]).
THIS ACTION IS MADE FINAL. 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.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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