Response to Arguments
Applicant's arguments filed 1/23/2026 with respect to the rejection of claim 8 over Dock have been fully considered but they are not persuasive. Applicant argues “Dock describes that the filter housing 10 includes a thimble 14 contained in the open end 15 of the housing and has a cigarette 21 inserted into the chamber 16 of the thimble. (See Dock col. 2 11.36-40; see also FIG. 7.) A conventional cigarette such as cigarette 21 or a cigarillo described in Dock is not "an aerosol generating substrate" as the term is described in the instant specification or understood in the art.” The Examiner disagrees. Applicant’s arguments are contradicted by US 2007/0074734 which establishes that a conventional cigarette can be used to generate an aerosol without burning or combustion products [0039, 0042, 0044]. Absent limitations directed to the specification composition of the claimed aerosol generating substrate, Dock reads on the present limitations.
Applicant’s arguments with respect to the rejections of claim 8 over Banks and Banerjee. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as detailed below.
Claim Rejections - 35 USC § 102
Claims 2, 3, 6, 8, and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dock (US 4,209,026).
Dock teaches a cigarette 21 comprising a first end (right end). The cigarette and the first end comprise tobacco (see “tobacco smoke” in the title). A conventional cigarette is inherently capable of being a “vapor generating article” that does not burn and generates an aerosol depending on the temperature to which it is heated, as evidenced by US 2007/0074734 [0034, 0042], i.e. the cigarette of Dock corresponds to the claimed vapor generating article and the tobacco corresponds to the aerosol generating substrate comprising a heat-not-burn material. The first end of the article is capable of being attached to a vapor generated device, i.e. “arranged for connection with a vapour generating device”.
Dock teaches the article comprises a filter [Fig. 1-6] comprising: a filter body 10 comprising: a first end 11 arranged as a mouthpiece; and a second end 16 opposite the first end arranged for attachment to a vapour generating article 21; and a cavity located within the filter body between the first and second ends, the cavity comprising water-reactive, expansible sponge material 22 (hydrophilic sponge material) [col. 1, l. 6-14; col. 2, l. 36-40], i.e. the cavity configured to allow a fluid comprising water to flow through the filter body from the second end to the first end; wherein the cavity comprises a filter portion arranged to filter the fluid as the fluid flows through the filter body; and wherein the filter portion is arranged to remove at least some of the water from the fluid as the fluid flows through the filter body, the filter portion comprises a selective filter medium arranged to selectively filter water from the fluid, the selective filter medium comprises a water-absorbing medium. The filter is re-usable [col. 2, l. 48] and attached to a second end (left end) of the vapor generating article [Fig. 7].
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Dock as applied to claim 8 above, and further in view of Braunshteyn (US 2007/0074734).
Dock does not teach a vapour generating device configured to receive the vapour generating article. Braunshteyn teaches using a cigarette with a vapor generating device to avoid combustion products and sidestream smoke [0044]. The vapour generating device comprises a heating chamber and a heater and the heater is configured to heat the aerosol generating substrate to a temperature between 160° C and 200°C [0019-0020]. It would have been obvious to one of ordinary skill in the art to use provide the vapour generating device of Braunshteyn configured to receive the article of Dock to avoid combustion products and sidestream smoke. Regarding the temperature range, 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).
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Dock as applied to claim 8 above, and further in view of Braunshteyn and England (US 2019/0116874).
Dock does not teach an aerosol cooling region extending over a portion of a length of the aerosol generating article. Braunshteyn teaches using a cigarette with a vapor generating device to avoid combustion products and sidestream smoke [0044]. It would have been obvious to one of ordinary skill in the art to use provide the vapour generating device of Braunshteyn configured to receive the article of Dock to avoid combustion products and sidestream smoke. Furthermore, England teaches including in a heat not burn article an aerosol cooling region extending over a portion of a length of the aerosol generating article, wherein the aerosol cooling region comprises a hollow tubular portion and extends between the aerosol generating substrate and the filter, for cooling the volatilized components of the smokable material [0004-0005]. It would have been obvious to one of ordinary skill in the art to include this aerosol cooling tube with the article of modified Dock for cooling the volatilized components.
Claims 2-4, 8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Moon (US 4,306,576) in view of Banerjee (US 2005/0121044).
Moon teaches a cigarette 19 comprising a first end (right end) [Fig. 1-2]. The cigarette and the first end necessarily comprise a substrate for smoking. A conventional cigarette is inherently capable of being a “vapor generating article” that does not burn and generates an aerosol depending on the temperature to which it is heated, as evidenced by US 2007/0074734 [0034, 0042], i.e. the cigarette of Moon corresponds to the claimed vapor generating article and the tobacco corresponds to the aerosol generating substrate comprising a heat-not-burn material. The first end of the article is capable of being attached to a vapor generated device, i.e. “arranged for connection with a vapour generating device”.
The article comprises a re-usable filter 10 [Fig. 1-3] attached at a second end of the article, the filter comprising: a filter body a filter body comprising: a first end (left end) arranged as a mouthpiece; and a second end (right end) opposite the first end arranged for attachment to a vapour generating article; and a cavity 14 located within the filter body between the first and second ends, the cavity configured to allow a fluid comprising water to flow through the filter body from the second end to the first end; wherein the cavity comprises a filter portion 15 arranged to filter the fluid as the fluid flows through the filter body [col. 1, l. 28 to col. 2, l. 15]. Moon does not specifically teach wherein the filter portion is arranged to remove at least some of the water from the fluid as the fluid flows through the filter body. Banerjee teaches a filter 10A for an aerosol (vapour) generating article comprising [Fig. 1]: a filter body comprising: a first end (left end of section 12) arranged as a mouthpiece; and a second end (right end of section 16) opposite the first end arranged for attachment to a vapour generating article [0128]; and a cavity located 14 within the filter body between the first and second ends [0099-0101], the cavity comprising silica [0142] i.e. the cavity configured to allow a fluid comprising water to flow through the filter body from the second end to the first end; wherein the cavity comprises a filter portion arranged to filter the fluid as the fluid flows through the filter body; the filter portion is arranged to remove at least some of the water from the fluid as the fluid flows through the filter body, the filter portion comprises a selective filter medium arranged to selectively filter water from the fluid, the selective filter medium comprises a water-absorbing medium. It would have been obvious to one of ordinary skill in the art to provide silica in the cavity of Moon to achieve the same, predictable result of filtering the smoke.
Claims 2-3, 5, 8, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Moon (US 4,306,576) in view of Banks (US 2020/0397039).
Moon teaches a cigarette 19 comprising a first end (right end) [Fig. 1-2]. The cigarette and the first end necessarily comprise a substrate for smoking. A conventional cigarette is inherently capable of being a “vapor generating article” that does not burn and generates an aerosol depending on the temperature to which it is heated, as evidenced by US 2007/0074734 [0034, 0042], i.e. the cigarette of Moon corresponds to the claimed vapor generating article and the tobacco corresponds to the aerosol generating substrate comprising a heat-not-burn material. The first end of the article is capable of being attached to a vapor generated device, i.e. “arranged for connection with a vapour generating device”.
The article comprises a re-usable filter 10 [Fig. 1-3] attached at a second end of the article, the filter comprising: a filter body a filter body comprising: a first end (left end) arranged as a mouthpiece; and a second end (right end) opposite the first end arranged for attachment to a vapour generating article; and a cavity 14 located within the filter body between the first and second ends, the cavity configured to allow a fluid comprising water to flow through the filter body from the second end to the first end; wherein the cavity comprises a filter portion 15 arranged to filter the fluid as the fluid flows through the filter body [col. 1, l. 28 to col. 2, l. 15]. Moon does not specifically teach wherein the filter portion is arranged to remove at least some of the water from the fluid as the fluid flows through the filter body. Banks teaches a filter comprising: a filter body comprising: a cavity between two filter sections [0065], i.e. a first section (end) arranged as a mouthpiece; and a second section (end) opposite the first end arranged for attachment to a vapour generating article (the filter is replaceable from the article housing [0067]); and a cavity located within the filter body between the first and second ends, the cavity comprising a molecular sieve [0065], i.e. the cavity configured to allow a fluid comprising water to flow through the filter body from the second end to the first end; wherein the cavity comprises a filter portion arranged to filter the fluid as the fluid flows through the filter body; the filter portion is arranged to remove at least some of the water from the fluid as the fluid flows through the filter body, the filter portion comprises a selective filter medium arranged to selectively filter water from the fluid, the selective filter medium comprises a water-absorbing medium. It would have been obvious to one of ordinary skill in the art to provide a molecular sieve in the cavity of Moon to achieve the same, predictable result of filtering the smoke.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Moon and Banks as applied to claim 8 above, and further in view of Braunshteyn.
Modified Moon does not teach a vapour generating device configured to receive the vapour generating article. Braunshteyn teaches using a cigarette with a vapor generating device to avoid combustion products and sidestream smoke [0044]. The vapour generating device comprises a heating chamber and a heater and the heater is configured to heat the aerosol generating substrate to a temperature between 160° C and 200°C [0019-0020]. It would have been obvious to one of ordinary skill in the art to use provide the vapour generating device of Braunshteyn configured to receive the article of modified Moon to avoid combustion products and sidestream smoke. Regarding the temperature range, 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).
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Moon and Banks as applied to claim 1 above, and further in view of Braunshteyn and England (US 2019/0116874).
Modified Moon does not teach an aerosol cooling region extending over a portion of a length of the aerosol generating article. Braunshteyn teaches using a cigarette with a vapor generating device to avoid combustion products and sidestream smoke [0044]. It would have been obvious to one of ordinary skill in the art to use provide the vapour generating device of Braunshteyn configured to receive the article of modified Moon to avoid combustion products and sidestream smoke. Furthermore, England teaches including in a heat not burn article an aerosol cooling region extending over a portion of a length of the aerosol generating article, wherein the aerosol cooling region comprises a hollow tubular portion and extends between the aerosol generating substrate and the filter, for cooling the volatilized components of the smokable material [0004-0005]. It would have been obvious to one of ordinary skill in the art to include this aerosol cooling tube with the article of modified Moon for cooling the volatilized components.
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.
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/ERIC YAARY/Examiner, Art Unit 1755