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 without traverse of Group 1: an aerosol-generating article in the reply filed on 03/19/2026 is acknowledged.
Claim(s) 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/19/2026.
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) 1-7 and 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jung (WO2020080783A1; reference made to Jung US20210127741-A1 as English equivalent), hereinafter Jung.
Jung discloses an aerosol generating article that comprises a tobacco rod (210), a cooling segment (220), a wrapper (254), and multiple filter segment (230/240). (See Figure 2A). This anticipates the tobacco medium portion, the cooling portion, the wrapper, and filter portion from claim 1, respectively. Claim 1, also does not recite the cooling portion being empty rather it is defined by having an interior space made by the tobacco medium portion and the filter portion. Based on the broadest reasonable interpretation, in light of the specification of ‘interior space’, in Figure 2 and 3 of the filed specifications, places the cooling portion between the tobacco medium portion and the filter portion with the wrapper wrapped around the contents.
In Figure 2A of Jung, the end of the tobacco rod (210) and the end of the first filter segment (230) are opposite each other, with a cooling segment (220) disposed in the middle as an intermediary, while the fourth wrapper (254) is wrapped around the entire aerosol generating article. The wrapper packages one tobacco rod, the cooling segment, and the filter segment. This anticipates the location of the tobacco medium portion, the filter portion, and the cooling segment from claim 2-4. This also anticipates the wrapper surrounding the tobacco medium portion, the cooling portion, and filter portion from claim 5 and 6.
Jung further teaches a second filter segment (240) that can be used in the aerosol generating article as a recess filter [0064]. This indicates that the wrapper would extend beyond the first filter portion (230). This anticipates the wrapping paper extending beyond the filter portion from claim 7.
Jung also teaches the tobacco rod being composed of a plurality of tobacco strands that are in the same direction or randomly. This anticipates the plurality of segment that includes a tobacco medium from claims 10 and claim 11.
Claim(s) 1-6, and 10-11 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), hereinafter Nanasaki.
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Nanasaki discloses an aerosol product that comprises a tobacco rod part, a mouthpiece part, and wrapped part around the contents [0019]. The mouthpiece portion consists of a cooling portion and a filter portion, while the wrapping part consists of a tipping paper and a lip releasing agent applied to the tipping paper. The tobacco rod part anticipates the tobacco medium portion, the filter portion anticipates the filter portion, the tipping paper anticipates the wrapper, and the cooling portion anticipates the cooling portion of Claim 1.
According to the annotated Figure 3 above, the end of the tobacco rod (tobacco medium portion) and the filter portion both have ends which oppose each other anticipating Claim 2. The tipping paper (wrapper) surrounds all three portions recited by the claim, thereby creating a cooling space which anticipates Claim 3. The Cooling Portion 15 is between the tobacco rod 10 and the filter 16 anticipating claim 4. A portion of the tobacco rod 10 and filter portion 16 are surrounding by the tipping paper (wrapper) anticipating Claim 5. Examiner notes there is no definition or limitation that positively recites the space of the cooling portion must be an empty space. The only requirement is the space provided is able to cool ether on its own or through some type of physical cooling component.
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. This anticipates Claim 6.
Nanasaki also teaches 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]. This anticipates the plurality of segment that includes a tobacco medium from claims 10 and claim 11.
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) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (WO2020080783A1; reference made to Jung US20210127741-A1 as English equivalent), hereinafter Jung, in view of Nanasaki (WO2021002309A1; reference made to Nanasaki EP-3995005A1 as English Translation), hereinafter Nanasaki.
Jung is applied under 35.USC. 102(a)(1), as above.
In regards to Claim 8 and 9, Jung fails to disclose the thickness and basis weight of the wrapper.
Nanasaki teaches the tipping paper (12) (reading over wrapper of applicant’s claim 1) has 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).
Jung and Nanasaki are analogous prior art to the current invention because they are concerned with the same field of endeavor, namely the components of an aerosol generating product.
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 wrapper of Jung with the thickness and basis weight of the tipping paper from Nanasaki (30 to 150 µm and 30 to 150 g/m2) because Nanasaki teaches the ranges of these properties for this purpose. This represents a combination of known prior art elements, tipping paper of Jung and properties of tipping paper of Nanasaki used in the art, to yield the predictable result of an aerosol producing article. This overlaps the ranges of Claim 8 and 9.
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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Claim 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), hereinafter Nanasaki.
Nanasaki is applied under 35.USC. 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.
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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
Conclusion
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-Fri. 7:30am-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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