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 .
Response to Amendment
Claims 1, 4-5 and 7 are amended. Claims 8-13 are withdrawn. Claims 14-20 are newly added. Claims 1-7 and 14-20 are presently examined.
Applicant’s arguments regarding the rejection under 35 USC 112(b) have been fully considered and are persuasive. The rejection of 9/22/2025 is overcome.
Applicant’s arguments regarding the rejections under 35 USC 102(a)(1) have been fully considered and are persuasive. The rejections of 9/22/2025 are overcome.
Applicant’s arguments regarding the rejections for non-statutory double patenting have been fully considered and are persuasive. The rejections of 9/22/2025 are overcome.
Claim Objections
Claim 19 is objected to because of the following informalities: The claim uses the word “of” where “at” is correct (lines 2, 3). Appropriate correction is required.
Claim Interpretation
Regarding claim 1, the claim recites the limitation “that is used with an aerosol generation device,” which is considered to be a statement regarding the intended use of the claimed aerosol generating article in the claim preamble. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, a manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See MPEP § 2111.02. In this case, the recitation is not considered to limit the claim since an aerosol generating article could be used with an aerosol generation device.
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 17 and 20 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.
Regarding claims 17 and 20, the term “hardness” is a relative term which renders the claim indefinite. The term “hardness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While applicant’s specification does state that the hardness is determined on the basis of KSM-1802 (page 1), this test method is for activated carbon not tobacco granules. One of ordinary skill in the art would therefore not comprehend its applicability to tobacco granules. The claim is therefore indefinite. For the purposes of this Office action, the claim will be interpreted as if it required tobacco granules with any hardness.
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.
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 1-2, 4-5 and 14-17 are rejected under 35 U.S.C. 103 as being obvious over Jin (CN 111406971, machine translation relied upon) in view of Cao (US 2022/0053822) and Molins (US 3,595,137) and Richards (US 47,660).
Regarding claims 1 and 15, Jin discloses a low tar cigarette, which is considered to meet the claim limitation of an aerosol generating article for use with an aerosol generation device, having a tobacco cut segment ([0057], figure 2, reference numeral 120) and a filter ([0058], figure 2, reference numeral 110’), which is considered to meet the claim limitation of a filter rod. The filter has an upstream filter rod segment ([0057], figure 2, reference numeral 111) and a filter segment that is located downstream ([0058], figure 2, reference numeral 111). The two filter segments are separated by a middle reconstituted tobacco powder segment ([0057], figure 2, reference numeral 112). The smoke powder is in the form of reconstituted tobacco power [0016] that is formed into granules [0023]. Applicant’s specification discloses that the tobacco granules form a vortex [0127]. Jin does not explicitly disclose (a) a volume filling ratio of the chamber, (b) the middle reconstituted tobacco powder segment being surrounded by a wrapper and (c) the filter section being cylindrical.
Regarding (a), Cao teaches an aerosol generating product having a smoke cooling element that is composed of particles (abstract) having a porosity of 40% to 90%, which is considered to be equivalent to the claimed filling rate, and a pressure drop of less than 2 mm H2O/mm [0033], which is considered to be equivalent to less than 120 mm H2O/60 mm. Cao additionally teaches that these flow elements allow smoke to be cooled [0042] while maintaining smoke flux to enhance the experience of cigarette consumers [0034].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the particles of Jin have the packing and pressure drop of Cao. One would have been motivated to do so since Cao teaches a porosity that enables a particulate segment to maintain smoke flux and enhance the experience of cigarette consumers.
Regarding (b), Molins teaches a cigarette filter in which beads are held within a compartment (abstract) located between two filter plugs and wrapped within a tubular wrapping to define a space between them (column 2, lines 42-56).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the cigarette filter of Jin with the wrapper of Molins. One would have been motivated to do so since Molins teaches a wrapper that defines a compartment for beads within a cigarette filter.
Regarding (c), Richards teaches a cigarette having short pieces of rattan as a mouthpiece to prevent even the smallest particles of tobacco from reach a user’s mouth. The mouthpiece is made perfectly cylindrical so that it is suitable to be attached to a cigarette (right and left columns).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter section of Jin be cylindrical. One would have been motivated to do so since Richards teaches that making mouthpiece sections cylindrical renders them suitable for attachment to cigarettes.
Regarding claim 2, Jin discloses that the electronic cigarette atomizes a mix [0063], which is considered to meet the claim limitation of a smokeless function.
Regarding claim 4, Jin discloses that the reconstituted tobacco powder has a moisture content of 10 wt% [0052].
Regarding claim 5, Jin discloses a method of producing the reconstituted tobacco powder that does not include any aerosol forming agent ([0022]-[0025]), which is considered to indicate that no aerosol forming agent is present.
Regarding claim 14, applicant’s specification discloses that the vortex causes uniform heating of the tobacco granules [0127].
Regarding claim 16, modified Jin teaches all the claim limitations as set forth above. Modified Jin does not explicitly teach a size of the chamber.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the chamber of modified Jin has a length within the claimed range. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 17, it is evident that the tobacco granules have some hardness since they are solid.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jin (CN 111406971, machine translation relied upon) in view of Cao (US 2022/0053822) and Molins (US 3,595,137) and Richards (US 47,660) as applied to claim 1 above, and further in view of Lomas (US 12,336,570).
Regarding claim 3, modified Jin teaches all the claim limitations as set forth above. Jin additionally discloses that the cigarette holder has an open suction nozzle ([0062], figure 2, reference numeral 210), which is considered to meet the claim limitation of a cooling segment. Modified Jin does not explicitly teach the suction nozzle also having a mouthpiece filter segment to be considered a filter rod.
Lomas teaches a filter in the form of a fabric which is permeable to gas or vaporized liquid whilst impermeable to liquid or unvaporized liquid and located within the mouthpiece (column 10, lines 1-12, figure 3, reference numeral 302).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the mouthpiece of mouthpiece Jin with the filter of Lomas. One would have been motivated to do so since Lomas teaches a filter that prevents liquid from leaking through.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jin (CN 111406971, machine translation relied upon) in view of Cao (US 2022/0053822) and Molins (US 3,595,137) and Richards (US 47,660) as applied to claim 1 above, and further in view of Branton (US 8,104,484).
Regarding claim 6, modified Jin teaches all the claim limitations as set forth above. Jin additionally discloses that the filter is made up of an acetate filter rod [0014]. Modified Jin does not explicitly teach acetate filter rod includes a paper material.
Branton teaches a smoking article having a filter that is made from either cellulose acetate or paper (column 3, lines 44-53).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the acetate filter of modified Jin for the paper of Branton. One would have been motivated to do so since Branton teaches that cellulose acetate and paper are equivalent materials for making cigarette filters. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Jin (CN 111406971, machine translation relied upon) in view of Cao (US 2022/0053822) and Molins (US 3,595,137) and Richards (US 47,660) as applied to claim 1 above, and further in view of Ichitsubo (US 12,029,234).
Regarding claim 7, modified Jin teaches all the claim limitations as set forth above. Jin additionally discloses that the powder has a mesh size of between 20 mesh and 80 mesh [0008], which is equivalent to diameters between 0.177 mm and 0.841 mm. Modified Jin does not explicitly teach (a) the claimed particle diameter being obvious and (b) the particles having the claimed density.
Regarding (a), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed range is obvious. 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).
Regarding (b), Ichitsubo teaches a non combustion type inhalation article comprising a tobacco filler (abstract) having a particle density of not more than 0.51 g/cm3 (column 3, lines 33-38). The tobacco filler is in the shape of a particle (column 3, lines 38-67, figure 1, reference numeral 1). Ichitsubo additionally teaches that this density improves the efficiency of tobacco flavor release (column 1, liens 56-60).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the tobacco particles of modified Jin with the density of Ichitsubo. One would have been motivated to do so since Ichitsubo teaches a density that improves the efficiency of tobacco flavor release.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Jin (CN 111406971, machine translation relied upon) in view of Cao (US 2022/0053822) and Molins (US 3,595,137) and Richards (US 47,660) as applied to claim 1 above, and further in view of Lee (WO 2020/256341, English language equivalent US 11,930,840 relied upon) and Millaudon (US 212,392).
Regarding claim 18, modified Jin teaches all the claim limitations as set forth above. Modified Jin does not explicitly teach (a) a filter rod disposed downstream of the tobacco rod, (b) an external wrapper and (c) the cigarette being tubular.
Regarding (a), Lee teaches an aerosol generating article having a cooler arranged adjacent to an end of the tobacco filler and configured to cool aerosol and a mouthpiece arranged adjacent to an end of the cooler (abstract) so that a user may puff at an appropriate temperature (column 5, lines 41-43).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the cooler and mouthpiece of Lee downstream of tobacco rod of modified Jin. One would have been motivated to do so since Lee teaches a cooling segment that allows a user to puff at an appropriate temperature.
Regarding (b), Millaudon teaches a cigarette having a mouthpiece that is connected with the rest of the cigarette through a wrapper (right column).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the cigarette of modified Jin with the wrapper of Millaudon. One would have been motivated to do so since Millaudon teaches a wrapper that joins a mouthpiece section to a cigarette.
Regarding (c), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the cigarette of modified Jin be tubular. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jin (CN 111406971, machine translation relied upon) in view of Cao (US 2022/0053822) and Molins (US 3,595,137) and Richards (US 47,660) and Lee (WO 2020/256341, English language equivalent US 11,930,840 relied upon) and Millaudon (US 212,329) as applied to claim 18 above, and further in view of Branton (US 8,104,484) and Ichitsubo (US 12,029,234).
Regarding claim 19, modified Jin teaches all the claim limitations as set forth above. Jin additionally discloses that the reconstituted tobacco powder has a moisture content of 10 wt% [0052], and a method of producing the reconstituted tobacco powder that does not include any aerosol forming agent ([0022]-[0025]), which is considered to indicate that no aerosol forming agent is present. The filter is made up of an acetate filter rod [0014]. The powder has a mesh size of between 20 mesh and 80 mesh [0008], which is equivalent to diameters between 0.177 mm and 0.841 mm. Modified Jin does not explicitly teach (a) acetate filter rod includes a paper material, (b) the claimed particle diameter being obvious and (c) the particles having the claimed density.
Regarding (a), Branton teaches a smoking article having a filter that is made from either cellulose acetate or paper (column 3, lines 44-53).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the acetate filter of modified Jin for the paper of Branton. One would have been motivated to do so since Branton teaches that cellulose acetate and paper are equivalent materials for making cigarette filters. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Regarding (b), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed range is obvious. 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).
Regarding (c), Ichitsubo teaches a non combustion type inhalation article comprising a tobacco filler (abstract) having a particle density of not more than 0.51 g/cm3 (column 3, lines 33-38). The tobacco filler is in the shape of a particle (column 3, lines 38-67, figure 1, reference numeral 1). Ichitsubo additionally teaches that this density improves the efficiency of tobacco flavor release (column 1, liens 56-60).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the tobacco particles of modified Jin with the density of Ichitsubo. One would have been motivated to do so since Ichitsubo teaches a density that improves the efficiency of tobacco flavor release.
Regarding claim 20, modified Jin teaches all the claim limitations as set forth above. Applicant’s specification discloses that the vortex causes uniform heating of the tobacco granules [0127]. It is evident that the tobacco granules have some hardness since they are solid. Modified Jin does not explicitly teach a size of the chamber.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the chamber of modified Jin has a length within the claimed range. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the porosity of Cao is about the material of the granules rather than the occupied volume of a filter segment, (b) that the cited references do not teach a space for a vortex to form, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), Cao discloses that the porosity is calculated based on the free space left among the cellulose acetate particles of Cao, as calculated based on the procedure of patent CN 103330283 (hereafter referred to as Garrett, English language equivalent US 2013/0032158 relied upon) [0042]. Garrett teaches determining void volume by determining the diameter of particles [0110] and a total porous mass length [0090], indicating that the calculation of Garrett is based on the volume of an overall section of the cigarette, rather than internal voids within particles. This is the same sense in which applicant uses porosity.
Regarding (b), applicant’s specification discloses that a vortex is generated when a puff occurs in a cavity with a plurality of tobacco granules [0129]. Furthermore, there must be space within the chamber of modified Jin since the porosity of modified Jin is less than 100%. One of ordinary skill in the art would therefore recognize that a vortex would form in the filter of modified Jin.
Regarding (c), all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755