DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s amendments and remarks filed December 23, 2025. Claims 1 and 4 have been amended. Claim 3 has been canceled. Claim 11 is new. Claims 1-2 and 4-10 are rejected. Claim 11 contains allowable subject matter if rewritten.
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 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.
Claims 1-2 and 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 20140345634 A1 (hereinafter ZUBER) in view of US 20200163377 A1 (hereinafter FRANKE).
Regarding claim 1, ZUBER discloses a smoking article (abstract). ZUBER discloses an aerosol generating article (Fig. 1, smoking article 1, ¶53) comprising: a front-end plug (Fig. 1, front-plug 2, ¶53) configured to introduce external air into the aerosol generating article (¶23); a tobacco medium portion (Fig. 1, combination of aerosol-forming substrate 7, tube 6, and transfer section 4, ¶56-¶58) including a tobacco material in a form of granules (¶32); and a filter unit (Fig. 1, mouthpiece filter 3, ¶59) arranged at a position opposite to the front-end plug across the tobacco medium portion.
ZUBER further teaches wherein the tobacco medium portion includes at least one of an acetate filter (¶19,¶23) and a paper filter (¶19), and the tobacco material in the form of granules is filled in the acetate filter or the paper filter (¶7). ZUBER teaches the use of paper for wrapping the rod (¶7). ZUBER teaches that there may be further elements formed from filter material (¶19). ZUBER teaches that the tube is formed from cellulose acetate (¶53, ¶57). ZUBER teaches that the aerosol forming substrate may be provided on or embedded in a thermally stable carrier such as granules (¶34). This is then deposited on a carrier in the form of a sheet (understood to be paper). ZUBER further teaches that the aerosol forming substrate containing granules may be provide in a paper or other wrapper (¶32). This is considered to be filled in the paper. Further ZUBER teaches that the substrate may be wrapped in filter paper (¶56). Given a broadest reasonable interpretation, the tobacco granules are filled within the paper filter. A person of ordinary skill in the art would obviously use cellulose and paper to wrap the tobacco medium. Doing so would assemble the elements in coaxial alignment with predictable results (¶53). Further, courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C. In this case a person of ordinary skill in the art would make design choices to use the materials already disclosed in ZUBER for the various elements with predictable results. Finally, due to the claimed recitation of “at least one” and “or” the prior art need only disclose one of the limitations to read upon the claim.
ZUBER does not disclose wherein a pH value of the tobacco material is 7 to 11.
FRANKE teaches tobacco constituent releasing components for use in an aerosol provision device (abstract). FRANKE teaches that the pH of the tobacco particles is at least about 7.5 (¶30, ¶46). FRANKE teaches that the purpose of adjusting the pH is to provide the tobacco constituents in a chemical form so that they are readily released (¶48). FRANKE teaches that raising the pH of the leaf reduces the nicotine’s natural association with acids so raising the pH makes the nicotine more volatile (¶48). FRANKE teaches that the pH can be from about 7.5 to no higher than about 14 (¶49).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ZUBER to provide wherein a pH value of the tobacco material is 7 to 11 as taught in FRANKE. A person of ordinary skill in the art would obviously adjust the pH to a basic state of between 7 to 11. Doing so would more readily release the constituents (FRANKE, ¶48-¶49). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 2, modified ZUBER discloses the aerosol generating article of claim 1 as discussed above. ZUBER does not disclose wherein the pH value of the tobacco material is 8 to 9.
FRANKE teaches tobacco constituent releasing components for use in an aerosol provision device (abstract). FRANKE teaches that the pH of the tobacco particles is at least about 7.5 (¶30, ¶46). FRANKE teaches that the purpose of adjusting the pH is to provide the tobacco constituents in a chemical form so that they are readily released (¶48). FRANKE teaches that raising the pH of the leaf reduces the nicotine’s natural association with acids so raising the pH makes the nicotine more volatile (¶48). FRANKE teaches that the pH can be from about 7.5 to no higher than about 14 (¶49).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ZUBER to provide wherein the pH value of the tobacco material is 8 to 9 as taught in FRANKE. A person of ordinary skill in the art would obviously adjust the pH to a basic state of between 7 to 11. Doing so would more readily release the constituents (FRANKE, ¶48-¶49). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, modified ZUBER discloses the aerosol generating article of claim 3 as discussed above. ZUBER further discloses wherein the tobacco medium portion includes: a first segment including the tobacco material (Fig. 1, aerosol forming substrate 7, ¶53, ¶32); and a second segment including a cooling element (Fig. 1, transfer section 4, ¶58). ZUBER discloses that volatile substances may cool within the transfer section (¶58).
Regarding claim 6, modified ZUBER discloses the aerosol generating article of claim 4 as discussed above. ZUBER further discloses wherein the first segment is arranged adjacent to the front-end plug, and the second segment is arranged adjacent to the filter unit. As shown in Fig. 1 below, the first segment (i.e. aerosol forming substrate 7) is arranged adjacent to the front end plug (2). The second segment (i.e. transfer section 4) is arranged adjacent to the filter (3).
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Regarding claim 7, modified ZUBER discloses the aerosol generating article of claim 4 as discussed above. ZUBER further teaches wherein the first segment is arranged adjacent to the filter unit, and the second segment is arranged adjacent to the front-end plug. ZUBER teaches that smoking articles are formed with other elements in the form of a rod (¶4). ZUBER teaches that the elements may be arranged in a sequence retained by cigarette paper (¶7). ZUBER teaches that the article may comprise further elements than those explicitly taught (¶19). ZUBER further teaches that the elements can be chosen, added to, and alternated without deviating from the spirit of the embodiments (¶61). Further, courts have held that rearrangement of parts of the prior art is unpatentable. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04, IV., part C.
Regarding claim 8, modified ZUBER discloses the aerosol generating article of claim 1 as discussed above. ZUBER does not disclose wherein the tobacco material has a diameter of about 0.1 mm to about 1.2 mm.
FRANKE teaches tobacco constituent releasing components for use in an aerosol provision device (abstract). FRANKE discloses that the tobacco constituent includes tobacco particles (considered to be granules) (¶1). FRANKE discloses that the tobacco particles have an average diameter of no greater than 3mm down to no greater than 0.3 mm (¶9).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ZUBER to provide wherein the tobacco material has a diameter of about 0.1 mm to about 1.2 mm as taught in FRANKE. A person of ordinary skill in the art using tobacco particles as taught by ZUBER would obviously look to FRANKE for diameters of particles that are workable. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, modified ZUBER discloses the aerosol generating article of claim 1 as discussed above. ZUBER does not disclose wherein the tobacco material has a diameter of about 0.3 mm to about 0.6 mm.
FRANKE teaches tobacco constituent releasing components for use in an aerosol provision device (abstract). FRANKE discloses that the tobacco constituent includes tobacco particles (considered to be granules) (¶1). FRANKE discloses that the tobacco particles have an average diameter of not greater than 3mm down to not greater than 0.3 mm (¶9).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ZUBER to provide wherein the tobacco material has a diameter of about 0.3 mm to about 0.6 mm as taught in FRANKE. A person of ordinary skill in the art using tobacco particles as taught by ZUBER would obviously look to FRANKE for diameters of particles that are workable. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10, modified ZUBER discloses the aerosol generating article of claim 1 as discussed above. ZUBER further discloses that the aerosol generating article is for use in an aerosol generating system (¶3) comprising: an aerosol generating article according to claim 1; and an aerosol generating device (Fig. 1, aerosol generating device 11, ¶62-¶63) including an accommodation space (Fig. 1, inside of sheath 12, ¶63) for accommodating the aerosol generating article.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over ZUBER and FRANK as applied to claims 1-4 and 6-10 above and in further in view of US 20140305448 A1 (hereinafter ZUBER '448).
Regarding claim 5, modified ZUBER discloses the aerosol generating article of claim 4 as discussed above. ZUBER does not disclose wherein the cooling element includes at least one of a tube structure formed of a polylactic acid (PLA) sheet and a paper tube structure formed of paper.
ZUBER ‘448 teaches an aerosol generating article including a substrate, a support, and an aerosol cooling element (abstract). ZUBER ‘448 teaches that the cooling element cools the aerosol formed by volatile components to cool the aerosol before it is inhaled by the user (¶17). ZUBER ‘448 teaches that the cooling element is formed of PLA (¶119-¶120). ZUBER ‘448 teaches that in a particularly preferred embodiment comprises a gathered sheet of PLA (¶121).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ZUBER to provide wherein the cooling element includes at least one of a tube structure formed of a polylactic acid (PLA) sheet and a paper tube structure formed of paper as taught in ZUBER ‘448. A person of ordinary skill in the art would obviously form the cooling element of PLA. Doing so would use a preferred material of construction known to have cooling properties (ZUBER ‘448, ¶121).
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 11 recites “the paper filter has a rolled shape; and the tobacco material is filled in a gap between sheets of rolled paper of the paper filter”. This structural limitation, best shown in applicant’s Fig. 4, is not rendered obvious in view of ZUBER. Nor would there be a motivation for the spiral shape to be filled with tobacco granules. The other prior art of record does not render this recitation obvious. Though spiral filters are well known in the art, see at least US 1993728 A and US 20120138075 A1, the limitation to provide tobacco granules in the spiral is a non-obvious limitation.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered but they are not persuasive.
Applicant argues, “Zuber, at best discloses that the aerosol-forming substrate 7, alleged to be similar to the tobacco material in the form of granules, is disposed between the front plug 2 and the tube 6, alleged to be similar to the acetate filter. Thus, Zuber does not disclose the tobacco material in the form of granules is filled in the acetate filter or the paper filter, as recited in amended claim 1”. ZUBER discloses that the aerosol-forming substrate contains granules and is wrapped in filter paper this is considered to be granules filled in paper (ZUBER ¶32). This limitation is further considered to be a rearrangement of parts the reasoning for the rejection of which is stated above and not repeated here.
Applicant argues, “Second, Zuber teaches away from the aerosol forming substrate 7 being filled in the tube 6. For example, paragraph [0057] of Zuber states: [0057] The tube 6 is located immediately downstream of the aerosol-forming substrate 7 and is formed from cellulose acetate. The tube 6 defines an aperture having a diameter of 3.3. millimeteres. One function of the tube 6 is to locate the aerosol-forming substrate towards the distal end 30 of the rod 15 so that it can be contact with a heating element. The tube 6 acts to prevent the aerosol- forming substrate 7 from being forced along the rod 15 towards the mouth-end 20 when a heating element is inserted." That is, Zuber teaches the preference that the tube 6 should locate the aerosol-forming substrate 7 towards a distal end 30 of the rod 15, thereby teaching away from the aerosol- forming substrate 7 being filled in the tube 6, as recited in amended claim 1.“ This argument suggests that because there are additional segments within the mapped tobacco medium portion (including the tube) that ZUBER teaches away from including paper and tobacco within the tobacco medium portion. Because the element of the instant application called “a tobacco medium portion” has been mapped to encompass several elements of ZUBER, any portions within those separate elements are obvious rearrangement of parts within ZUBER. Therefore the “tobacco medium portion” of the instant application which includes the combination of aerosol-forming substrate 7, tube 6, and transfer section 4, of ZUBER does indeed contain both tobacco granules (¶23) and paper filter (¶19). Therefore the finding of teaching away is not supported.
Applicant further argues, “Third, the Office Action also alleges that paragraph [0019] of Zuber teaches a paper filter. However, paragraph [0019] of Zuber discloses: [0019] In some embodiments, the smoking article may comprise further elements. For example, the article may further comprise a filter, such as a mouthpiece filter, located downstream of the aerosol-forming substrate. Preferably, such filter is located at the mouth end of the rod. If present, a filter is preferably assembled along with the front-plug and the aerosol-forming substrate in the rod. Suitable filters may be made from any suitable filter material. Many such filter materials are known in the art, for example a suitable filter may be made from a length of cellulose acetate tow. Other elements such as free-flow filters and spacers may also be assembled in contact with the cigarette paper as part of the smoking article. That is, Zuber, at best discloses that free-flow filters may be assembled in contact with the cigarette paper. The filters in contact with the cigarette paper in Zuber do not satisfy "the paper filter" as recited in amended claim 1.” Broadly, paper filter, is any paper that would be used as a filter. Therefore since ZUBER teaches the use of paper and sheets these qualify as paper filter. Further, as made clear by applicant’s own disclosure (See PG Pub ¶50), paper used as a wrapper will absorb nicotine released by the tobacco so even as simply a wrapping, it is an absorbent filter. This would be obvious to one of ordinary skill in the art that paper is absorbent.
Applicant argues, “Fourth, the Office Action also alleges that "[a] person of ordinary skill in the art would obviously use cellulose and paper to wrap the tobacco medium. Doing so would assemble the elements in coaxial alignment with predictable results." See page 5 of the Office Action. However, using cellulose and paper to wrap the tobacco medium does not satisfy "the tobacco material in the form of granules is filled in the acetate filter or the paper filter" as recited in amended claim 1. Therefore, even assuming that a person of ordinary skill in the art would obviously use cellulose and paper to wrap the tobacco medium, a person of ordinary skill in the art would not obviously have the tobacco material in the form of granules filled in the acetate filter or the paper filter.“ On the contrary, the wrapping of the granules with paper broadly satisfies the limitation of the granules being filled in paper. The recitation of claim 11 includes structural limitations that, “the tobacco material is filled in a gap between sheets of rolled paper of the paper filter”, however claim 1 only requires that the granules are filled in the paper and granules within a paper tube satisfies this recitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747