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 .
Election/Restrictions
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/9/2026.
Applicant’s election without traverse of group I, claims 1-13 in the reply filed on 3/9/2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 is a dependent of claim 12 wherein the instant claim 12 contains the phrase: “the tobacco medium portion comprises a plurality of segments”; the instant claim 13 contains the phrase: “wherein at least one of the plurality of segments comprises a tobacco medium”. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim 13 is 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.
Claim 13 (a dependent of claim 12 which depends on claim 1) contains the phrase: “a tobacco medium”. It’s not clear if “a tobacco medium” in the instant claim 13 is different from “tobacco medium” of claim 12 and claim 1. Appropriate correction is required.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Minzoni (US Pub. No. 2019021392).
Regarding claim 1, Minzoni discloses an aerosol-generating article comprising:
a tobacco medium portion (20, fig. 1);
a filter portion (50, fig. 1) disposed to be spaced apart from the tobacco medium portion; and
a tubular cooling portion (40, fig. 1) disposed between the tobacco medium portion and the filter portion, wherein the tubular cooling portion comprises a body with a cooling material [0065-0067].
Regarding claim 2, Minzoni discloses the cooling material comprises activated carbon [0065].
Regarding claim 11, Minzoni discloses the tubular cooling portion comprises a cellulose acetate tow [0065] [0073].
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.
Claim(s) 4-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minzoni (US Pub. No. 2019021392).
Regarding claim 4, Minzoni discloses the activated carbon has a surface area in a range [0051] overlapping with the claimed range of 600 to 3,000 m2/g; in case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Regarding claims 5-6, Minzoni suggests the cooling material is disposed in the tubular cooling portion along a longitudinal direction of the tubular cooling portion by incorporating the particles during manufacture of the filaments [0073-0074]. Since there are a finite number of solutions. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have the cooling material uniformly disposed or non-uniformly disposed (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 7, similar to the discussion above, there is a binary choice for the concentration of the cooling material between the inlet side and the outlet side of the tubular cooling portion. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have a concentration of the cooling material in the tubular cooling portion at an inlet side of the tubular cooling portion adjacent to the tobacco medium portion is greater than at an outlet side of the tubular cooling portion adjacent to the filter portion (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 8, similar to the discussion above, there is a binary choice for the concentration of the cooling material between the inlet side and the outlet side of the tubular cooling portion. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have a concentration of the cooling material in the tubular cooling portion at an inlet side of the tubular cooling portion adjacent to the tobacco medium portion is less than at an outlet side of the tubular cooling portion adjacent to the filter portion (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 9, similar to the discussion above, there is a binary choice for the concentration of the cooling material between a central region of the tubular cooling portion and an opposite end regions of the tubular cooling portion. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have a concentration of the cooling material at a central region of the tubular cooling portion is greater than at opposite end regions of the tubular cooling portion (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claim 10, similar to the discussion above, there is a binary choice for the concentration of the cooling material between a central region of the tubular cooling portion and an opposite end regions of the tubular cooling portion. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have a concentration of the cooling material at a central region of the tubular cooling portion is less than at opposite end regions of the tubular cooling portion (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minzoni (US Pub. No. 2019021392) in view of Carpenter et al. (U.S Pub. No. 20110271968).
Regarding claim 3, Minzoni does not expressly disclose the mesh size of the activated carbon. Carpenter discloses particle sizes can be about 30 mesh to 200 mesh ([0003] and [0042]) overlapping with the claimed range of 20 to 100 mesh. Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to use activated carbon with the particle size taught by Carpenter for its adsorbent property in the device of Minzoni; in case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minzoni (US Pub. No. 2019021392) in view of Li et al. (CN 208540741).
Regarding claims 12-13, Minzoni does not expressly disclose the tobacco medium portion comprises a plurality of segments of tobacco medium. Li discloses an aerosol generating article comprises a tobacco medium portion wherein the tobacco medium portion comprises a plurality of segments of tobacco medium for preferred heating schemes (112, 114 of figs. 2-8). Therefore, it would have been obvious to one of ordinary skill in the art at the tim the invention was made to make the tobacco medium portion of Minzoni with plurality of segments of tobacco medium as taught by Li.
Conclusion
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/PHU H NGUYEN/Examiner, Art Unit 1747