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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10; sub-species 1A, claims 3 and 7-10 readable on the elected sub-species; and sub-species 2A, claims 5 and 7-10 readable on the elected sub-species, in the reply filed on April 3, 2026 is acknowledged.
The traversal is on the ground(s) that Species 1 and Species 2 do not define patentably distinct inventions requiring separate examination and instead define implementation details within the scope of generic claim 1. This is not found persuasive because the species are independent or distinct because the claims to the different species recite mutually exclusive characteristics of such species. Regarding Applicant’s argument regarding separate examinations, this is not found persuasive because requiring separate examinations is not a required criterion for showing lack of unity in applications submitted under 35 U.S.C. 371.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 4, 6, and 11-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 3, 2026.
Response to Amendment
Claims 1-12 are pending. Claims 2, 4, 6, and 11-12 are withdrawn.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 5, 7, and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (CN 111567863, cited on 4/21/2025 IDS; machine translation relied upon).
Regarding claim 1, Li discloses an aerosol generating article, (sealed cigarette comprising from upstream to downstream, [0034] Fig. 1):
a tobacco rod, (tobacco section 1, [0034] Fig. 1);
a front end plug (plug 5 [0034] Fig. 1) disposed at a first side of the tobacco rod (Fig. 1);
a filter rod (filter section 3 [0034] Fig. 1) disposed at a second side of the tobacco rod (Fig. 1); and
an aerosol transfer tube (first flue gas channel 1-1, [0036] Fig. 1) disposed inside the tobacco rod (the tobacco section 1 has an axial flue gas channel 1-1 at its center, [0036]) Fig. 1), configured to allow aerosols to pass therethrough (the flue gas passage extends axially through the tobacco section 1, [0036]). This anticipates claim 1.
Regarding claim 5, Li discloses the aerosol transfer tube extends parallel to a lengthwise direction of the tobacco rod (see Fig. 1). This anticipates claim 5.
Regarding claim 7, Li discloses the aerosol transfer tube is disposed at a center of the tobacco rod (See Fig. 1 and claim 1 rejection). This anticipates claim 7.
Regarding claim 9, Li discloses a plurality of aerosol transfer tubes ([0036] Fig. 1, the non-axial portion of the tobacco section also includes six axial second flue gas channels 1-2). This anticipates claim 9.
Regarding claim 10, Li discloses the aerosol transfer tube has a circular cross-section (see Fig. 1). This anticipates claim 10.
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 111567863, cited on 4/21/2025 IDS; machine translation relied upon) in view of Brifcani et al. (WO 2019243538, cited on 9/20/2023 IDS).
Regarding claim 8, Li discloses all the claim limitations as set forth above. Li does not explicitly disclose or reasonably suggest a volume of the aerosol transfer tube.
Brifcani teaches an aerosol generating article for producing an inhalable aerosol when heated, the aerosol generating article comprising: a hollow cylindrical rod of aerosol generating substrate; a wrapper circumscribing the rod; a hollow tube extending along a longitudinal axis of the rod and defining a central airflow channel (reading over an aerosol transfer tube) of the aerosol generating article (Fig. 1 pg 2 lines 26-29). The cross-sectional area of the central airflow channel is from about 3.14 mm2 to about 4.52 mm2 (pg 2 lines 32-33).
The hollow cylindrical rod has an external diameter of between about 5 mm and about 12 mm (pg 5 lines 19-20). Therefore, the overall cross-sectional area (where A = π * r2) of the hollow cylindrical rod is from about 19.63 mm2 to about 113.04 mm2. The hollow generating rod 12 and the hollow tube 14 are both shown to have approximately the same axial length in Fig. 1, therefore the hollow tube volume range of percent with respect to the total volume of the hollow aerosol generating rod is from about 3% to about 23% (i.e., (3.14 / 113.04) to about (4.52 / 19.63)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected a hollow tube volume percent range of about 3% to about 23% with respect to the total volume of hollow aerosol generating rod as taught by Brifcani because in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See 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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Additionally, absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable. This reads over claim 8.
Allowable Subject Matter
Claim 3 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:
Regarding claim 3, Li does not disclose wherein the aerosol transfer tube extends into the front end plug.
Cheong et al. (KR 20210022329, cited on 4/21/2025 IDS; machine translation relied upon) teaches a smoking article 100 (reads over an aerosol generating article) includes a front plug 110, a medium part 130 (reads over a tobacco rod), a support element 150, and a filter part 170 (Fig. 1 [0033]). External air introduced into the interior through the upstream end of the front plug 110 passes through a closed section formed with a relatively short length and then flows into the first opening 111, which is an empty space, and then flows downstream. Specifically, the open portion of the first opening 111 may be formed in the downstream direction and the closed portion may be formed in the upstream direction. In this case, the open part of the first opening 111 comes into contact with the medium part 130, so the first opening 111 is not visible from the outside of the smoking item 100 (Fig. 5 [0064], [0073]). According to one embodiment, an empty space is formed inside the first opening 111, which serves as a passage for external air to flow downstream ([0076]).
However, Cheong does not explicitly teach or reasonably suggest the first opening is an extension of an aerosol transfer tube into the front plug. Therefore, considering the above prior art, it is unclear how one of ordinary skill in the art would arrive at the claimed combined structure without the use of hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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