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.
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.
Claim(s) 1-6, 10-11, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nanasaki (WO2021002309A1; reference made to Nanasaki EP-3995005A1 as English Translation).
In regards to claim 1, Nanasaki discloses an aerosol generating article (heat not burn tobacco product 1) comprising:
a tobacco medium portion (tobacco rod part 10);
a filter portion disposed to be spaced apart from the tobacco medium portion (filter portion 15);
a wrapper (tipping paper 12) surrounding the tobacco medium portion and the filter portion (tipping paper 12), wherein the wrapper defines an outer surface between respective outer ends of the tobacco medium portion and the filter portion;
and a cooling portion (cooling portion 15) corresponding to a vacant interior space defined by the tobacco medium portion (tobacco rod 10), the filter portion (filter portion 16), and a portion of the wrapper (tipping paper 12).
Nanasaki discloses that cooling portion 15 may be formed by rolling thick paper into a cylindrical form having a hollow space, wherein vapor comes into contact with air within the hollow space and is cooled ([0128]). Nanasaki further discloses that air may be introduced from outside into cooling portion 15 through an opening, therefore providing a hollow, air-containing interior of cooling portion 15 ([0129]).
In regards to claim 2, Nanasaki discloses an aerosol generating article from claim 1, wherein an end of the tobacco medium portion and an end of the filter portion oppose each other with respect to the cooling portion (Figure 3 shows the end of the tobacco rod (tobacco medium portion) and the filter portion both have ends which oppose each other).
In regards to claim 3, Nanasaki discloses an aerosol generating article from claim 2, wherein the space of the cooling portion is formed by the portion of the wrapper and respective inner ends of the tobacco medium portion and the filter portion (The tipping paper 12 surrounds all three portions recited by the claim, thereby creating a cooling portion).
In regards to claim 4, Nanasaki discloses an aerosol generating article from claim 1, wherein the cooling portion is located between the tobacco medium portion and the filter portion (the cooling portion 15 is between the tobacco rod 10 and the filter 16).
In regards to claim 5, Nanasaki discloses an aerosol generating article from claim 4, wherein the wrapper surrounds at least a portion of an outer peripheral surface of each of the tobacco medium portion and the filter portion (a portion of the tobacco rod 10 and filter portion 16 are surrounding by the tipping paper 12).
In regards to claim 6, Nanasaki discloses an aerosol generating article from claim 5, wherein the wrapper surrounds an entire outer peripheral surface of each of the tobacco medium portion and the filter portion (While Figure 3 does not depict the tipping paper (wrapper) completely encompassing both the tobacco rod and the filter as claimed, Figure 2(f) teaches an embodiment in which the tipping paper encompasses both the tobacco rod and the filter portion. Therefore, one of ordinary skill in the art can at once envisage the embodiment of Figure 3 in which the tipping paper of Nanasaki encompasses the tobacco rod 10 and the filter portion 16 for this reason).
In regards to claim 10 and 11, Nanasaki discloses an aerosol generating article from claim 1, wherein the tobacco medium portion comprises a plurality of segments and at least one of the plurality of segments includes a tobacco medium (the tobacco rod part is a portion of the heat-not-burn tobacco product. The tobacco rod part is composed of tobacco filler, which is a structure composed of a plurality of tobacco sheets [0084]).
In regards to claim 14, Nanasaki discloses an aerosol generating article of claim 1, wherein the outer surface is an external surface between the respective outer ends of the tobacco medium portion and the filter portion (the tipping paper 12 is an outer surface that cover the tobacco medium portion and the filter portion).
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(s) 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Nanasaki (WO2021002309A1; reference made to Nanasaki EP-3995005A1 as English Translation)
Nanasaki is applied under 35 U.S.C. 102(a)(1), as above
In regards to Claim 7, Nanasaki teaches various embodiments with the combination of tobacco rod, cooling portion and filter wrapped with a tipping paper but does not teach or suggest the tipping paper extends outwardly beyond the filter portion.
However, it logically follows the tipping paper may be extended from the filter outwardly to fold over and prevent the filter from being removed article. In other words, it logically follows the use the tipping paper to secure the filter portion of Nanasaki such by folding it over the ends.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Nanasaki such that the filter was additionally secured into the article by extending the tipping paper outward and downward as discussed above for the logical purpose of securing the filter as discussed above. This represents a change of size and shape of the tipping paper of Nanasaki.
In regards to Claim 8 and 9, Nanasaki teaches the tipping paper (i.e. wrapper from
claims) having a thickness of 30 to 150 µm and basis weight of 30 to 150 g/m2 which overlaps the claimed range ([0057] and [0058]). See [0162] of Nanasaki for exemplified tipping paper (wrapper of claims).
Therefore, it would be obvious to one of the ordinary skills in the art before the effective filing date of the claimed invention to modify the invention of Nanasaki such that the tipping paper used has a thickness of 30 to 150 µm and basis weight of 30 to 150 g/m2 because Nanasaki teaches these ranges of these properties for this purpose. This overlaps the ranges of Claim 8 and Claim 9, thus declaring them obvious.
Response to Arguments
Applicant's arguments filed July 28, 2026 have been fully considered but not persuasive with respect to the rejection based upon Nanasaki.
In regards to Jung, applicant argues that Jung fails to disclose a “vacant interior space” because Jung's cooling segment 220 contains material. Applicants’ argument is persuasive and all arguments to Jung are moot.
In regards to Nanasaki, applicant argues that Nanasaki fails to disclose a wrapper defining an outer surface because the tipping paper 12 is covered by a lip release agent 13. Examiner respectfully disagrees. Nanasaki discloses embodiments in which the lip release agent 13 does not cover the entire surface of the tipping paper 12. Nanasaki describes the embodiment of Fig. 2b as a form in which a single sheet of tipping paper has no lip release agent applied in the second region ([0046]). Thus, the second region of the embodiment of Fig. 2b, the tipping paper 12 has an exposed outer surface without lip release agent 13. Nanasaki further identifies the embodiment of Fig. 2b as a preferred form for reducing substances generated from the lip release agent during usage ([0047]). Additionally, the tipping paper of Nanasaki is interpreted to be an external surface further comprising a coating, the lip release agent, in an at least partially coated manner. Applicant's argument that the tipping paper 12 is covered by lip release agent 13 and therefore cannot define the claimed outer surface is not persuasive.
Applicant further argues that Nanasaki fails to disclose the claimed ‘vacant interior space’. This argument is also not persuasive. Nanasaki expressly discloses that the cooling portion 15 may be formed by rolling thick paper into a cylindrical form having a hollow space therein, wherein vapor containing aerosol-source material and tobacco flavor components contacts air in the hollow space and is cooled ([0128]). Nanasaki further discloses that the outside air may be introduced into the cooling portion 15 through an opening during use ([0129]). Thus, Nanasaki expressly provides a hollow, air-containing interior space within cooling portion 15, which reads on the claimed ‘vacant interior space’.
Furthermore, Nanasaki states that the inner space of the cooling portion “may be filled” with a sheet-shaped material ([0133]). The optional language further establishes that the inner space is not required to be filled.
Applicant's arguments do not overcome the rejection of claims 1 and 14 under 35 U.S.C. 102(a)(1) as anticipated by Nanasaki, as explained above.
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 HANNAH C NNABUGWU whose telephone number is (571)272-8791. The examiner can normally be reached Mon-Thurs. 8:30am-5:00pm.
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/H.C.N./Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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