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 June 24, 2026. Claims 1, 2, 4, and 6-14 are pending. Claim 12-14 are withdrawn. Claims 1, 2, 4, and 6-11 are rejected.
Election/Restrictions
Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected aerosol generating system, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 27, 2026.
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 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160295914 A1 (hereinafter JORDIL) in view of US 20030159703 A1 (hereinafter YANG).
Regarding claim 1, JORDIL teaches a smoking article having an aerosol generating substrate with a liquid flavorants surrounded by particulate material (abstract). JORDIL teaches a multi-segmented smoking article (Fig. 1, smoking article 100, ¶53). The article has a tobacco rod 101, and a filter with a breakable capsule 120 containing liquid flavorants surrounded by particulate material 125 (¶53). JORDIL teaches smoking article (Fig. 1, smoking article 100, ¶53) comprising: a plurality of medium granules (Fig. 1, particulate material 125, ¶53). JORDIL discloses a medium receiver (a cavity of the filter as disclosed in ¶53) filled with the plurality of medium granules (as shown in Fig. 1). JORDIL further discloses, a filter located on the one side of the medium receiver. JORDIL discloses that the filter is multi-segmented as shown in Fig. 1 and discussed in ¶38 and ¶53 with a downstream mouth end filter. JORDIL further discloses the plurality of medium granules have an atypical shape (¶20). JORDIL discloses that the particulate material preferably has an irregular or non-spherical shape. Atypical shape is constructed to mean, as indicated in applicant’s specification, “ basically in a spherical shape but also in a shape atypical enough to maintain the granule dispersibility”.
JORDIL teaches plurality of medium granules have a roundness of 30% or more and 90% or less to ensure a granule dispersibility and a granule filter workability.
JORDIL teaches that the particulate may have irregular shaped including a sphericity of less than 0.8 or less than 0.6 (¶20). Sphericity is considered to be how round the particles are relative to perfect spheres (sphericity of 1 JORDIL ¶20-¶21) in terms of the claims of the instant application is a roundness of 100%). JORDIL teaches that this irregular shape will more readily break the capsule (¶22).
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 plurality of medium granules have a roundness of 30% or more and 90% or less to ensure a granule dispersibility and a granule filter workability. JORDIL teaches that the particles have irregular shaped sphericity and provides a range of less than 80% or less than 60%. 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). Further JORDIL provides motivation for the irregular shape to more readily break the capsule. This is considered to read upon applicant’s claimed recitation of “to ensure a granule dispersibility and a granule filter workability”.
JORDIL does not disclose the medium receiver is configured by folding a flat sheet, to which the plurality of medium granules are applied, a plurality of times.
YANG teaches a liquid flavorant to activated carbon particles that are placed in a cigarette (abstract). YANG teaches that the flavored particles are loaded onto a support such as lightly or tightly folded paper that is inserted into a hollow portion of the cigarette (¶45).
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 JORDIL to provide the medium receiver is configured by folding a flat sheet, to which the plurality of medium granules are applied, a plurality of times as taught in YANG. A person of ordinary skill in the art would obviously use a folded sheet as a carrier for particles to be added to a cigarette. Doing so would provide a support for the particles within the cavity of the cigarette. Regarding the limitation of a plurality of times, this is considered to be a product by process recitation. Since YANG teaches that the paper carries the particles, the structure of the instant application is met. See MPEP 2113, I. .
Further, the recitation, wherein the medium receiver is configured by folding a flat sheet, to which the plurality of medium granules are applied, a plurality of times, is a product by process recitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps (See MPEP 2113, I.). The structure imparted by the process is reasonably suggested to be one in which the particle shape is not circular in nature (i.e. atypical). JORDIL discloses a medium receiver with a plurality of particles applied to a sheet. The method of constructing the product is not given patentable weight. Further this limitation was previously restricted from examination, applicant elected the product claims, not the method claims (see Election made without traverse in the reply filed on February 27, 2026).
Regarding claim 6, modified JORDIL discloses the smoking article of claim 1 as discussed above. JORDIL further teaches wherein the roundness is 60% or more and 90% or less for the same reasons discussed in the rejection of claim 1.
Regarding claims 7-8, modified JORDIL discloses the smoking article of claim 1 as discussed above. Regarding the limitation that the plurality of medium granules are manufactured by a fluidized bed granulation process and the fluidized bed granulation process is a process in which a spraying direction of a liquid binder and a flow direction of fluidized air face each other. This recitation a product by process recitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps (See MPEP 2113, I.). The structure imparted by the process is reasonably suggested to be one in which the particle shape is not circular in nature (i.e. atypical). JORDIL discloses atypical particles. Therefore, the atypical particles are reasonably suggested to have the same or substantially similar “atypical-ness” imparted by the fluidized bed granulation process. The fluidized bed processes recited impart no specific structure on the granules that cannot be found in the particles of JORDIL. There is no evidence that the direction of spray as recited imparts any additional structure on the particles of Jin that is not already present in JORDIL.
Claims 2 and 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160295914 A1 (hereinafter JORDIL) in view of US 20110277781 A1 (hereinafter CLARK).
Regarding claim 2, modified JORDIL discloses the smoking article of claim 1 as discussed above. JORDIL does not disclose a humectant receiver located on the other side of the medium receiver and configured to generate an aerosol.
CLARK teaches a multicomponent smoking article filter adapted to be disposed at the non-burning end of a rod of smokable material with a cavity disposed between a first and send plug (abstract). CLARK teaches that a first cavity comprises cellulosic granules containing and flavor and optionally a humectant (¶7) and a second cavity also containing a humectant like glycerin (¶10). CLARK teaches that the inclusion of the humectant provides subjectively pleasing flavors and other sensory characteristics to the mainstream smoke and minimizes dryness (¶13). As best taught in Fig. 3, is an embodiment with multiple segments containing either or both of cellulosic granules containing humectant and water (¶44-¶45). CLARK further encourages one of ordinary skill in the art to vary levels of the granules and cavities and the lengths of the cavities to promote desired sensorial attributes such as dwell time (¶45).
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 JORDIL to provide a humectant receiver located on one side of the medium receiver and configured to generate an aerosol as taught in CLARK. A person of ordinary skill in the art would obviously include multiple segments to promote desired sensorial attributes (CLARK ¶45). As encouraged by CLARK, a person of ordinary skill in the art would add segments to achieve the desired attributes with predictable results..
Regarding 11, modified JORDIL discloses the smoking article of claim 2 as discussed above. JORDIL further discloses the filter comprises: a first filter having a cavity therein; and a second filter fully filled with a filtration material. JORDIL discloses that filter cigarettes with multi-component filters comprise two or more segments of filter material (¶2) JORDIL further discloses that the mouthpiece (part of the filter) includes a cavity that is partially filled (¶9-¶10).
Claims 4 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over JORDIL and YANG as applied to claim 1 above, and further in view of US 20220022526 A1 (hereinafter JOYEUX).
Regarding claim 4, modified JORDIL discloses the smoking article of claim 3 as discussed above. Neither JORDIL nor YANG disclose a humectant is applied to one surface of the flat sheet.
JOYEUX teaches an aerosol generating article comprising a substrate and a filter that is formed of one or more sheets of a fibrous paper material (abstract). JOYEUX teaches that the paper material has a humectant such as polyether, glycol, glycerin, etc. (¶65). JOYEUX teaches that any suitable technique can be used to apply the humectant including press spraying etc (¶79) and an embodiment where the humectant is applied to one or both sides of the sheet by a printer (¶80). JOYEUX teaches that applying humectant coats the paper while still retaining benefits (¶80).
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 JORDIL to provide a humectant is applied to one surface of the flat sheet as taught in JOYEUX. Doing so would coat the papers while retaining benefits that are realized by the sheet (JOYEUX ¶80).
Regarding claim 9, modified JORDIL discloses the smoking article of claim 1 as discussed above. JORDIL does not disclose the medium receiver is formed by a method comprising applying a humectant to one surface of a flat sheet, disposing the plurality of medium granules on the one surface of the flat sheet, to which the humectant is applied, folding the one surface of the flat sheet to face each other, additionally folding the flat sheet a plurality of times, and wrapping, with a wrapper, the flat sheet folded a plurality of times.
JOYEUX teaches an aerosol generating article comprising a substrate and a filter that is formed of one or more sheets of a fibrous paper material (abstract). JOYEUX teaches that the paper material has a humectant such as polyether, glycol, glycerin, etc. (¶65). JOYEUX teaches that any suitable technique can be used to apply the humectant including press spraying etc (¶79) and an embodiment where the humectant is applied to one or both sides of the sheet by a printer (¶80). JOYEUX teaches that applying humectant coats the paper while still retaining benefits (¶80).
YANG teaches a liquid flavorant to activated carbon particles that are placed in a cigarette (abstract). YANG teaches that the flavored particles are loaded onto a support such as lightly or tightly folded paper that is inserted into a hollow portion of the cigarette (¶45). As shown in Figs. 3-4, the folded section is then wrapped with an outside wrapper (Figs. 3-4, tipping paper 14, ¶47).
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 JORDIL to provide the medium receiver is formed by a method comprising applying a humectant to one surface of a flat sheet, disposing the plurality of medium granules on the one surface of the flat sheet, to which the humectant is applied, folding the one surface of the flat sheet to face each other, additionally folding the flat sheet a plurality of times, and wrapping, with a wrapper, the flat sheet folded a plurality of times as taught in JOYEUX and YANG. A person of ordinary skill in the art would obviously apply both humectant as a coating and use a folded paper support to contain the granule. Doing so would provide a location for the granules within the cigarette and a humectant for reducing dryness. As discussed above in the rejection of claim 3, this claim is considered to be a product by process recitation. Since YANG and JOYEUX teaches that the paper carries the particles, the humectant is applied to paper, and the folded paper is then wrapped by an outer wrapper, the structure of the instant application is met. See MPEP 2113, I.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over JORDIL, YANG, and JOYEUX as applied to claim 9 above and in further view of US 20050098187 A1 (hereinafter GRIERSON).
Regarding claim 10, modified JORDIL discloses the smoking article of claim 9 as discussed above. JORDIL does not disclose the plurality of medium granules not applied to the one surface of the flat sheet are reused in a process of manufacturing the smoking article.
GRIERSON teaches smokable filler materials comprising tobacco dust and a binder (abstract). GRIERSON teaches that the tobacco is agglomerated tobacco waste made from tobacco dust that does not have commercial value (¶10). GRIERSON teaches that the tobacco having varying granules sizes can be reused in subsequent steps (¶42).
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 JORDIL to reuse medium granules in the process of manufacturing a smoking article as taught in GRIERSON. A person of ordinary skill in the art would obviously reuse granules. Doing so would reduce waste and create commercial value (GRIERSON ¶42).
Response to Arguments
Applicant’s arguments, filed June 24, 2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of JORDIL and YANG.
In response to applicant’s amendments to include the limitations of claims 3 and 5 in claim 1, the rejection of record for claim 1 is now a 35 USC 103 rejection. This rejection is detailed above and not repeated here.
Applicant argues, “By the Examiner's own admission, Jordil does not disclose the limitations of ‘wherein the medium receiver is configured by folding a flat sheet, to which the plurality of medium granules are applied, a plurality of times’.” JORDIL does not disclose this limitation, however YANG teaches it. Further, as noted above, this recitation a product by process recitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps (See MPEP 2113, I.).
Applicant argues, “Jordil does not disclose the inclusion of medium granules having a roundness of 30% or more and 90% or less. Rather, the particulate material (125) of Jordil is placed in the groove of the filter (103) instead of to the flat sheet of the tobacco rod (101). Thus, Jordil does not disclose medium granules, as the particulate material (125) described therein is contained in a cavity included in the filter (103) of the smoking article (100) and preferably includes an adsorbent material (activated carbon) that captures or converts one or more smoke components. As such, the particulate material (125) of Jordil corresponds to "filter granules" rather than "medium granules.” Elements of prior art teachings need not have the identical name as the instant application. In this case, the granules are placed within the smoking article. Whether they are referred to as “medium” or “filter” granules does not change their presence or function within the smoking article. Further the filter of JORDIL is a multicomponent filter. Applicant is arguing that because the prior art called the multicomponent all the filter instead of breaking into its more function sections this nullifies the fact that there are granules in both. In fact, the instant application discloses that the medium granules have a function to filter (See specification filed July 13, 2023, page 5, lines 11-16) to improve taste. In this way, the “medium” granules of the instant application, could aptly be named “filter” granules since they do filter as one of their functions. (See also page 7, lines 12-15).
Applicant argues, “As shown in Table 1 of the instant specification, when the roundness of the granules is between 30% and 90%, the taste is good. Conversely, if the roundness of the granules is less than 30%, granule dispersibility is good, but granule filter workability becomes very poor, resulting in poor taste; and if the roundness exceeds 90%, granule filter workability is good, but granule dispersibility is poor, resulting in poor taste. By reciting the limitations of "wherein the medium receiver is configured by folding a flat sheet, to which the plurality of medium granules are applied, a plurality of times" in claim 1 as presently amended and previously recited in claim 3 as originally filed, the importance of granule dispersibility and adhesion is emphasized. The criticality of the recited numerical range of roundness is that by selecting an optimal roundness of the medium granules, improved taste can be provided. Therefore, it is Applicant's position that this numerical range of roundness cannot be easily derived from the cited references of record.” The range of JORDIL lies inside the range of the instant application. Therefore, 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).
Applicant argues, “Applicant respectfully but strenuously disagrees that it would have been obvious to modify Jordil in view of Yang such that the particular material of Jordil would now be supported on a folded sheet of paper, as such a modification would interfere with the breakable capsule that is a key component of the smoking article of Jordil. Such a proposed modification of Jordil would render it unsatisfactory for the intended purpose of providing flavor through a smoking article that not only reduces the loss of a flavoring component but also allows a smoker to break the capsule without the application of undue force (MPEP §2143.01(V)). Thus, it cannot be said that Jordil and Yang could be combined by one of ordinary skill in the art with a reasonable expectation of success.” As discussed above, this is a product by process claim recitation and is therefore not given patentable weight. Applicant is reminded that a divisional application can be filed for the method claim that was withdrawn earlier in prosecution as detailed above. Inclusion of this method for examination in the product claims is not proper.
Conclusion
Applicant's amendment necessitated the new grounds 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
Prosecution Insights