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 .
Response to Amendment
The office action is in response to Applicant’s amendment filed on 7/10/2026.
Claims 1, 3, 5-6, and 8-25 are pending.
Claims 1, 5, and 6 are amended.
Claims 24-25 are withdrawn for being drawn to non-elected groups.
Claims 2, 4, and 7 are cancelled.
The rejections of claims 9-11, 13, 16, and 21-23 under 35 U.S.C. 112(b) are withdrawn due to amendments made to the claims.
The rejections of claim 7 under 35 U.S.C. 112(d) is withdrawn due to cancellation of the claim.
Response to Arguments
Applicant' s arguments, see pages 5-9, filed 7/10/2026, with respect to the rejection(s) of claims 1-7 and 14-19 under 35 U.S.C. 102 and 103, respectively, have been fully considered and are not persuasive. The Applicant has presented new amendments to claim 1 not previously presented, specifically regarding “the first substantially cylindrical body is formed of filamentary tow having a first total denier value between 8,000 and 20,000, and wherein the second substantially cylindrical body is formed of filamentary tow having a second total denier value, wherein the first total denier value is lower than the second total denier value.”
On pages 9-10, the Applicant argues that while Seo teaches the first filter segment 321 may be in the range of 20,000 to 30,000, Seo does not teach or suggest a total denier value between 8,000 and 20,000.
The Examiner respectfully disagrees with the Applicants arguments. Seo teaches the total denier of the front-end plug 33, which is the same as the first cylindrical body 321 ([0082]) may be in the range of 20000 to 30000 ([0079]) and therefore the end points overlap and the range claimed is considered prima facie obvious.
A modified rejection based on the amendments is provided below.
Claim Rejections - 35 USC § 112
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.
Claims 5-6 and 21 are 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.
Claims 5-6 recites the limitation "the first denier per filament value and the second denier per filament value" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. There is no first or second denier per filament value defined.
For purposes of examination, the “first denier and second denier per filament values” are being interpreted as the cylindrical bodies further comprising first and second denier per filament values respectively.
Claims 5-6 are further objected to for depending from a now canceled claim, claim 4. Appropriate correction is required.
Claim 21 is indefinite for reciting “the cylindrical body is substantially continuous through a volume” because it is unclear what is substantially continuous. It seems in accordance with the instant specification that the second substantially cylindrical body actually extends substantially continuously throughout its volume. It is further unclear what “substantially continuously” means as there is no definition provided in the instant specification.
For purposes of examination, “substantially continuous” is being interpreted as the second substantially cylindrical body extends to a downstream end.
Claim Rejections - 35 USC § 103
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.
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, 3, 5-6, 8-11, 17-18, 20-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (US-20210315264-A1) and further in view of Seo (US-20210000168-A1).
In regards to claim 1, Lord directed to a smoking substitute consumable, discloses a smoking substitute article, such as a HNB consumable (i.e., non-combustible aerosol provision system) ([0023]), the article comprising:
An aerosol forming substrate 3 comprising at least one component for aerosolizing (i.e., aerosol-generating material) ([0023]-[0028]);
A hollow filter element 4 (i.e., hollow tubular element) disposed downstream of the aerosol generating material (Figure 3 and [0567]);
A cardboard spacer tube 6 (i.e., first substantially cylindrical body) disposed downstream of the hollow tubular member (Figure 3 and [0568]); and
A hollow filter element 5 (i.e., second substantially cylindrical body) adjacent to and downstream of the first substantially cylindrical body and disposed at a mouth end of the article (Figure 3, [0490], and [0567]).
It is further noted by the Examiner that Lord also teaches additional embodiments wherein the spacer cardboard tube 6 may be provided between the aerosol-forming substrate and the upstream filter element and/or between the two filter elements ([0067]). Therefore the cardboard spacer tube could also act as the hollow tubular segment and the hollow filter element 4 would then be the first substantially cylindrical body. This additional embodiment will be relied upon for dependent claims 12 and 19.
Lord discloses the cylindrical bodies comprising cellulose acetate tow ([0564]) but is silent regarding the total denier value of the first and second substantially cylindrical bodies, and therefore does not explicitly disclose the first cylindrical body having a first total denier value between 8,000 and 20,000 and wherein the first total denier value is lower than the second total denier value of the second substantially cylindrical body.
Seo directed to a cigarette for an aerosol generating device discloses two separate cylindrical bodies (321 and 322) comprising filament cellulose acetate tow (i.e., filamentary tow), which is the same filamentary tow used in Lord, and further discloses each of the cylindrical bodies have a mono denier (denier per filament) and a total value denier ([0079]-[0084]).
Seo further discloses the denier of each filament is a value that can be changed within a specific range, thereby increasing an atomization amount of the cigarette for an aerosol generating device ([0088]).
Seo further discloses the total denier of the front-end plug 33, which is the same as the first cylindrical body 321 ([0082]) may be in the range of 20000 to 30000 ([0079]) and therefore the end points overlap the claimed range of the first cylindrical body comprising a total denier value between 8,000 and 20,000, and the range claimed is considered prima facie obvious.
While Seo appears to suggest a higher first total denier and thus does not explicitly disclose the first total denier value is lower than the second total denier value, Seo does teach a range of total denier values wherein the first total denier is either higher, lower, or the same as the second one, and thus one of ordinary skill could reasonably select a total denier value from a finite number of possibilities that make obvious the claim. Furthermore, the ranges in Seo overlap the claimed ranges and the preferable ranges do not teach away from the broader disclosure.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Lord by providing specific total denier values for the first cylindrical body and making the first total denier value lower than the second, as taught by Seo, because both are directed to aerosol generating devices comprising articles, Lord teaches the same filamentary tow material, cellulose acetate ([0564]) and is merely silent to specific total denier values, Seo teaches the denier range increases the atomizing amount of the cigarette for an aerosol generating device ([0088]), and this involves applying known total denier values to the same filamentary tow material to yield predictable results.
In regards to claim 3, Lord discloses the second substantially cylindrical body is formed of cellulose acetate tow ([0564]).
In regards to claim 5, Lord is silent regarding denier per filament values and therefore does not explicitly disclose the first and second denier per filament values are the same.
Seo discloses both cylindrical bodies, 321 and 322, can comprise the same denier per filament and total denier value because the total and mono denier values overlap in range (Seo [0079]-[0084).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Lord by making the denier per filament values the same, as taught by Seo, because both are directed to aerosol generating devices comprising articles, Lord teaches the same filamentary tow material, cellulose acetate ([0564]) and is merely silent to specific denier per filament values, Seo teaches the denier range increases the atomizing amount of the cigarette for an aerosol generating device ([0088]), and this involves applying known denier per filament value to the same filamentary tow material to yield predictable results.
In regards to claim 6, Lord is silent regarding denier per filament values and therefore does not explicitly disclose the first and second denier per filament values are different.
Seo also discloses mono denier value of both the first and second substantially cylindrical bodies can have different values (Seo [0079]-[0083]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Lord by making the denier per filament values the same, as taught by Seo, because both are directed to aerosol generating devices comprising articles, Lord teaches the same filamentary tow material, cellulose acetate ([0564]) and is merely silent to specific denier per filament values, Seo teaches the denier range increases the atomizing amount of the cigarette for an aerosol generating device ([0088]), and this involves applying known denier per filament value to the same filamentary tow material to yield predictable results.
In regards to claim 8, Lord discloses the first cylindrical body is longer than the second cylindrical body ([0059], [0068], and [0565]-[0566]).
In regards to claim 9, Lord discloses the length of the first cylindrical body may be between 10 and 15 mm ([0068]). The range disclosed by the prior art overlaps the claimed range of the axial length of the first substantially cylindrical body being between 7 and 13 mm and is therefore considered prima facie obvious.
In regards to claim 10, Lord discloses the second cylindrical body can have a length between 8 and 15mm ([0059]). The range disclosed by the prior art overlaps the claimed range of the axial length of the second substantially cylindrical body being between 3 and 9 mm and is therefore considered prima facie obvious.
In regards to claim 11, Lord discloses a combined length of the first and second cylindrical bodies can be between 10 and 20 mm ([0059] and [0068]).
In regards to claim 17, Lord discloses the first cylindrical body is disposed immediately downstream of and adjacent to the hollow tubular member (Figures 3-6).
In regards to claim 18, Lord discloses the hollow tubular element is formed from cellulose acetate tow (filamentary tow) ([0564]).
In regards to claim 20, Lord discloses the wrapping layer may be embossed ([0488]) and circumscribes each of the cylindrical bodies ([0492]).
In regards to claim 21, Lord discloses the second cylindrical body continues throughout the article to the mouth end of the article (Figure 3).
In regards to claim 23, Lord discloses the length of the hollow tubular member may be less than 20 mm ([0220]). The range disclosed by the prior art overlaps the claimed range of the axial length of the hollow tubular member being between 17 and 26 mm and is therefore considered prima facie obvious.
Claims 12-16, 19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (US-20210315264-A1) in view of Seo (US-20210000168-A1), as applied to claim 1 above, and further in view of Uthurry (US-20220015414-A1).
In regards to claim 12, In the alternative embodiment detailed in claim 1, Lord discloses the hollow tubular member comprises ventilation apertures 15ag and 15bg (i.e., one or more ventilation areas) (Figure 42 and [0731]).
However, in the primary embodiment Lord does not explicitly disclose the hollow tubular member comprises ventilation.
Uthurry directed to an aerosol-generating article with a ventilated hollow segment, discloses the aerosol-generating article comprising a rod of an aerosol-generating substrate, a mouthpiece and a plug of filtration material, wherein the mouthpiece is arranged downstream and the mouthpiece further defines a cavity extending all the way through the mouthpiece segment ([0010]).
Uthurry further discloses the aerosol-generating article further comprises a ventilation zone at a location along the hollow tubular segment ([0010]) and the ventilation zone creates a satisfactory cooling of the stream of aerosol generated upon heating the article ([0030]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to modify Modified Lord by applying the ventilation zone of Lord to the hollow tubular element, as taught by Uthurry, because both are directed to aerosol generating articles, Uthurry teaches the hollow tubular element is known in the art to comprise ventilation areas and the ventilation area creates satisfactory cooling of the air drawn by the user ([0030]), and this merely involves adjusting a location of the ventilation areas of a similar article to a location known in the art to yield predictable results.
In regards to claims 13-14, Modified Lord discloses a wide range of lengths for the hollow tubular segment and the entire length of the article, including lengths within the claimed range (Uthurry [0094]). While Modified Lord does not explicitly disclose a ventilation area at approximately 18.5 mm or approximately 15 mm from the downstream end of the article, Lord does disclose the length of the first cylindrical body can be 10 mm ([0068]) and the second cylindrical body can have a length of 8 mm ([0059]). Since the hollow tubular segment directly abuts the first cylindrical body, Modified Lord discloses the ventilation is provided in the hollow tubular segment, and the total length of the first and second cylindrical bodies can be 18 mm, it would be obvious to one of ordinary skill in the art that the ventilation would be somewhere 18mm or greater which overlaps the claimed ventilation being 18.5 mm from a downstream end of the article and is therefore considered prima facie obvious.
In regards to claim 15, Lord discloses the ventilation areas are apertures ([0731]).
In regards to claim 16, Modified Lord discloses ventilation into the hollow tubular element, and Lord teaches a cavity (Figure 3), but Lord is silent to a ventilation level of the cavity.
However, Uthurry discloses a ventilation level from about 30 percent to about 60 percent ([0083]), and therefore Modified Lord teaches the aerosol-generating article has a ventilation level from about 30 percent to about 60 percent (Uthurry [0083]).
The range disclosed by the prior art overlaps the claimed range of the mouthpiece comprises a ventilation level of 40 to 80% of aerosol drawn through the article and is therefore considered prima facie obvious.
Uthurry further discloses the inventors have found that the temperature drop caused by the admission of cooler, external air into the hollow tubular segment via the ventilation zone may have an advantageous effect on the nucleation and growth of aerosol particles ([0084]) and that it is advantageously possible to adjust the ventilation level of the aerosol-generating article by adjusting the ventilation perforations in size or number of perforations ([0092]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to further modify Modified Lord by making the ventilation level 40 to 80%, as taught by Uthurry, because one of ordinary skill in the art would look to a similar reference for a ventilation level known in the art of a similar aerosol-generating device, especially when the original prior art is silent to one, Uthurry2’ teaches the ventilation level can be varied ([0092]) and the ventilation level has an advantageous effect on the nucleation and growth of aerosol particles ([0084]), and this merely involves applying a known ventilation level of a similar aerosol generating article to yield predictable results.
In regards to claim 19, Lord discloses in the alternative embodiment described in claim 1, the hollow tubular element as the spacer tube, which comprises carboard/paper ([0067] and [0351]).
Lord further discloses the thickness of the aerosol-forming substrate may be less than about 0.5 mm ([0404]), but is silent to a thickness of the hollow tubular element and therefore does not explicitly disclose a thickness of the hollow tubular element being less than 0.5mm.
Uthurry directed to an aerosol-generating article with a ventilated hollow segment, discloses the aerosol-generating article comprising a rod of an aerosol-generating substrate, a mouthpiece and a plug of filtration material, wherein the mouthpiece is arranged downstream and the mouthpiece further defines a cavity extending all the way through the mouthpiece segment ([0010]).
Uthurry further discloses the hollow tubular segment 16 is provided as a cylindrical tube having a length of about 18 millimeters and a thickness of the tube wall is about 100 micrometers (0.1 mm) ([0139]). The range disclosed by the prior art overlaps the claimed range of the wall thickness of the hollow tubular element being less than 0.5 mm and is therefore considered prima facie obvious.
Uthurry further discloses the hollow tubular segment 16 may for example be formed from a paper ([0140]).
Therefore, before the effective filling date of the claimed invention, it would be obvious to modify Lord by making the wall thickness of the hollow tubular section less than 0.5 mm, as taught by Uthurry, because one of ordinary skill in the art would look to a similar reference for a wall thickness of a similar hollow tubular element comprising the same materials, especially when the original reference is silent to one, and this merely involves applying a known wall thickness of a similar hollow tubular element to yield predictable results.
In regards to claim 22, Lord discloses the aerosol generating material is a rod of aerosol generating material ([0008]) and has a length between 10 and 15 mm.
Lord further discloses “many equivalent modifications and variations will be apparent to those skilled in the art when given this disclosure. Accordingly, the exemplary embodiments of the invention set forth above are considered to be illustrative and not limiting. Various changes to the described embodiments may be made without departing from the spirit and scope of the invention” ([0734], but does not explicitly disclose a length of the aerosol generating material being from 22 and 30 mm.
Uthurry directed to an aerosol-generating article with a ventilated hollow segment, discloses the aerosol-generating article comprising a rod of an aerosol-generating substrate, a mouthpiece and a plug of filtration material, wherein the mouthpiece is arranged downstream and the mouthpiece further defines a cavity extending all the way through the mouthpiece segment ([0010]).
Uthurry further discloses the inventors have surprisingly found how the favorable effect of enhanced nucleation may significantly counter the less desirable effects of dilution, such that satisfactory values of aerosol delivery are consistently achieved with aerosol-generating articles in accordance with the invention. This is particularly advantageous with “short” aerosol-generating articles, such as ones wherein a length of the rod of aerosol-generating substrate is less than about 40 millimeters and preferably less than 25 millimeters ([0034]). The range disclosed by the prior art overlaps the claimed range of the aerosol generating material having a length of between 22 and 30 mm and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Lord by lengthening the aerosol generating material to between 22 and 30 mm, as taught by Uthurry, because both are directed to aerosol generating articles, Uthurry teaches shorter articles are more favorable ([0034]), Lord teaches the embodiments are not limited and many modifications can be made ([0734]), and this merely involves lengthening a similar aerosol generating material of a similar article to a known length in the art to yield predictable results.
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 MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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