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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9-16-2026 has been entered.
Claim Rejections - 35 USC § 112 – First Paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 7-8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, claims 1, 7, and 8 have been amended to recited that the diameter of the airflow barrier “gradually decreases” from the first diameter to the second diameter. This is considered to be new matter in that the phrase encompasses subject matter beyond the subject matter in Figures 3 and 4.
Claim Rejections - 35 USC § 112 – Second Paragraph
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 1-5 and 7-8 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 1 and 7-8: the term “gradually” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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 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.
(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.
Claims 1-4 are is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Stevenson (US 5,248,323).
Claim 1: Stevenson a vacuum cleaner having a filter (Abstract). Stevenson teaches a filter segment (“for an aerosol generating article”-- it is submitted that this claim limitation refers to an intended use of the claimed device (i.e. filter segment) and is not considered to provide a structural feature to the claimed device (i.e. claimed structure)), the filter segment comprising: an outer portion 30 comprising a filter (col5 Lns15-17); and an inner portion 70 disposed inside the outer portion 30 (col5 Lns39-51) and comprising an airflow barrier surrounded by the filter and configured to retard or block airflow (col6 Lns20-22: “As the air moves through conical filter 70, fumes and other entrained gases are attracted by the activated carbon and do not pass upwardly through disc 60”), wherein the airflow barrier comprises a tapered shape (col5 Lns48-51: “conical” filter element 70 ) having a first diameter upstream at a first end of the airflow barrier and a second diameter downstream at a second end of the airflow barrier opposite to the first end that is less than the first diameter, wherein a diameter of the airflow barrier gradually decreases from the first diameter to the second diameter (see portion of Fig1 annotated below):
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Claim 2: the airflow barrier is disposed in a central portion of the filter segment (see portion of Fig1 annotated below):
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Claim 3: the airflow barrier extends in a longitudinal direction of the filter segment (Fig1).
Claim 4: the airflow barrier comprises a solid material (col5 Lns48-51: “spongy, flat non-woven polyester mat material impregnated with activated charcoal”).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Stevenson, as applied to claims 1-4 above, and further in view of Schultink (US 6,171,369 B1) or Morrow (US 10,238,253 B2).
Claim 5: Stevenson teaches does not teach that the solid material (of the airflow barrier) comprises paper.
However, it is well-known and conventional in the art (i.e. vacuum cleaners) that the filter comprises polyester and paper – as taught by Schultink and Morrow. Schultink teaches a vacuum cleaner filter comprising polyester and paper (Abstract; col5 Lns38-59); and for this reason it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Stevenson that the solid material comprises paper with the polyester. Morrow teaches a vacuum cleaner filter 24. Filter 24 comprises any suitable type or combination of types of materials suitable for filtering particles entrained within an airstream – paper and polyester (Abstract; col4 nL64 to col5 Ln11); and for this reason it would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Stevenson that the solid material comprises paper with the polyester.
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Thesing (US 5,012,829) in view of Woodman (US 2014/0076337 A1).
Claim 1: Thesing teaches a filter segment 12 (“for an aerosol generating article”-- it is submitted that this claim limitation refers to an intended use of the claimed device (i.e. filter segment) and is not considered to provide a structural feature to the claimed device (i.e. claimed structure)), the filter segment 12 comprising: an outer portion 22 comprising a filter; and an inner portion disposed inside the outer portion 22 (col3 Lns9-14) and comprising an airflow barrier 20 surrounded by the filter and configured to retard or block airflow -- inner portion has a resistance to airflow and thus can retard airflow (col2 Lns37-48; col3 Lns30-35; Fig1). Thesing indicates airflow mostly through the inner portion or the outer portion 22 (c3 L21-35) (Note: in either case, the inner portion still has its resistance to airflow -- thus the inner portion still retards airflow). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
Claim 1: Thesing does not teach that the airflow barrier 20 comprises a tapered shape having a first diameter upstream at a first end of the airflow barrier 20 and a second diameter downstream at a second end of the airflow barrier 20 opposite to the first end that is less than the first diameter, wherein a diameter of the airflow barrier 20 gradually decreases from the first diameter to the second diameter.
Woodman teaches a filter segment 4 of a smoking article 1 (para25). The filter segment 4 comprising: an outer portion 22 comprising a filter; and an inner portion 20 disposed inside the outer portion 22 (para46). To help develop a desired pressure drop (taper-shape allows one to develop a pressure drop for airflow direction), the filter segment 4 (inner portion 20) comprises a tapered shape having a first diameter upstream at a first end of the airflow barrier 20 and a second diameter downstream at a second end of the airflow barrier 20 (see Fig3a annotated below) opposite to the first end that is less than the first diameter, wherein a diameter of the airflow barrier 20 gradually decreases from the first diameter to the second diameter (para46 Fig3a Fig3b).
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It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Thesing that the airflow barrier 20 comprises a tapered shape having a first diameter upstream at a first end of the airflow barrier 20 and a second diameter downstream at a second end of the airflow barrier 20 opposite to the first end that is less than the first diameter, wherein a diameter of the airflow barrier 20 gradually decreases from the first diameter to the second diameter in that Woodman teaches this helps to develop a desire pressure drop.
Claim 2: Thesing teaches the filter segment 12 of claim 1, wherein the airflow barrier 20 is disposed in a central portion of the filter segment 12 (Fig1).
Claim 3: Thesing teaches the filter segment 12 of claim 1, wherein the airflow barrier 20 extends in a longitudinal direction of the filter segment 12 (Fig1).
Claims 4-5: Thesing teaches the filter segment 12 of claim 1 (for claim 4; claim 4 for claim 5), wherein the airflow barrier 20 comprises a solid material such as a cellulose acetate tow (col3 Lns65-67).
Claim 7: Thesing teaches an aerosol generating article 10 (col3 Lns9-20) comprising: a first segment comprising a medium (medium = filter material) (see annotated Figure 1 below -- as an example); and a second segment disposed downstream of the first segment (see annotated Figure 1 below -- as an example), wherein the second segment comprises a filter segment 12, wherein the filter segment 12 comprises: an outer portion 22 comprising a filter; and an inner portion disposed inside the outer portion 22 (col3 Lns9-14) and comprising an airflow barrier 20 surrounded by the filter and configured to retard or block airflow -- inner portion has a resistance to airflow and thus can retard airflow (col2 Lns37-48; col3 Lns30-35; Fig1). The aerosol generating article comprises a tobacco rod 14 (col3 Lns9-20). Thesing indicates airflow mostly through the inner portion or the outer portion 22 (c3 L21-35) (Note: in either case, the inner portion still has its resistance to airflow -- thus the inner portion still retards airflow). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
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Claim 7: Thesing does not teach that the airflow barrier 20 comprises a tapered shape having a first diameter upstream and a second diameter downstream that is less than the first diameter.
Woodman teaches a filter segment 4 of a smoking article 1 (para25). The filter segment 4 comprising: an outer portion 22 comprising a filter; and an inner portion 20 disposed inside the outer portion 22 (para46). To help develop a desired pressure drop (taper-shape allows one to develop a pressure drop for airflow direction), the filter segment 4 (inner portion 20) comprises a tapered shape having a first diameter upstream at a first end of the airflow barrier 20 and a second diameter downstream at a second end of the airflow barrier 20 (see Fig3a annotated below) opposite to the first end that is less than the first diameter, wherein a diameter of the airflow barrier 20 gradually decreases from the first diameter to the second diameter (para46 Fig3a Fig3b).
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It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Thesing that the airflow barrier 20 comprises a tapered shape having a first diameter upstream at a first end of the airflow barrier 20 and a second diameter downstream at a second end of the airflow barrier 20 opposite to the first end that is less than the first diameter, wherein a diameter of the airflow barrier 20 gradually decreases from the first diameter to the second diameter in that Woodman teaches this helps to develop a desire pressure drop.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Thesing in view of Woodman and Fleischhauer (US 5,591,368).
Claim 8: Thesing teaches an aerosol generating article 10 (col3 Lns9-20) comprising: a first segment comprising a medium (medium = filter material) (see annotated Figure 1 below -- as an example); and a second segment disposed downstream of the first segment (see annotated Figure 1 below -- as an example), wherein the second segment comprises a filter segment 12, wherein the filter segment 12 comprises: an outer portion 22 comprising a filter; and an inner portion disposed inside the outer portion 22 (col3 Lns9-14) and comprising an airflow barrier 20 surrounded by the filter and configured to retard or block airflow -- inner portion has a resistance to airflow and thus can retard airflow (col2 Lns37-48; col3 Lns30-35; Fig1). The aerosol generating article comprises a tobacco rod 14 (col3 Lns9-20). Thesing indicates airflow mostly through the inner portion or the outer portion 22 (c3 L21-35) (Note: in either case, the inner portion still has its resistance to airflow -- thus the inner portion still retards airflow). Other locations within reference may be included in the above recited locations (paragraphs, drawing, abstract, claims) to demonstrate further the features in the reference as claimed in the instant claims.
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Claim 8: Thesing does not teach combining the aerosol generating article 10 with an aerosol generating system wherein the aerosol generating system comprises an aerosol generating device comprising a first housing, a second housing disposed within the first housing and configured to accommodate the aerosol generating article, and a heater disposed around the second housing and configured to heat the first segment.
Fleischhauer teaches combining an aerosol generating article 23 having filters 63 and 65 and tobacco at webs 57 (col7 Lns29-35; col8 Lns1-4). Fleischhauer teaches combining the aerosol generating article 23 with an aerosol generating system 25 (col5 Lns24-25) wherein the aerosol generating system 25 comprises an aerosol generating device 37 (col5 Lns33-43) comprising a first housing (the space inside the heater fixture 39) (col5 Lns1-3; col6 Lns24-30), a second housing (the space surrounded by heater blades 120 positioned cylindrically inside the aerosol generating system 25) (col10 Lns58-64) disposed within the first housing (Fig1 Fig3) and configured to accommodate the aerosol generating article 23 (col10 Lns58-64) and a heater (comprising the heater blades 120) (col6 Lns1-19) disposed around the second housing (Fig1 Fig3) and configured to heat the tobacco at the webs 57 which necessarily the heats filter 65 -- by being in direct contact therewith and/or by the heated air in cavity 79 which is in direct contact therewith and/or by heated air flowing therethrough. The aerosol generating system 25 provides many benefits -- such as to a smoker -- the smoker being provided with the ability to suspend and resume its use as desired (col3 Lns47-49) .
It would have been obvious to a person of ordinary kill in the art, before the effective filing date of the invention, to have provided in Thesing combining the aerosol generating article 10 with the aerosol generating system of Fleischhauer (wherein the aerosol generating system comprises an aerosol generating device comprising a first housing, a second housing disposed within the first housing and configured to accommodate the aerosol generating article, and a heater disposed around the second housing and configured to heat the first segment) in that the aerosol generating system of Fleischhauer provides many benefits -- such as to a smoker -- the smoker being provided with the ability to suspend and resume its use as desired.
Claim 8: Thesing does not teach that the airflow barrier 20 comprises a tapered shape having a first diameter upstream and a second diameter downstream that is less than the first diameter.
Woodman teaches a filter segment 4 of a smoking article 1 (para25). The filter segment 4 comprising: an outer portion 22 comprising a filter; and an inner portion 20 disposed inside the outer portion 22 (para46). To help develop a desired pressure drop (taper-shape allows one to develop a pressure drop for airflow direction), the filter segment 4 (inner portion 20) comprises a tapered shape having a first diameter upstream at a first end of the airflow barrier 20 and a second diameter downstream at a second end of the airflow barrier 20 opposite (see Fig3a annotated below) to the first end that is less than the first diameter, wherein a diameter of the airflow barrier 20 gradually decreases from the first diameter to the second diameter (para46 Fig3a Fig3b).
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It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the invention, to have provided in Thesing that the airflow barrier 20 comprises a tapered shape having a first diameter upstream at a first end of the airflow barrier 20 and a second diameter downstream at a second end of the airflow barrier 20 opposite to the first end that is less than the first diameter, wherein a diameter of the airflow barrier 20 gradually decreases from the first diameter to the second diameter in that Woodman teaches this helps to develop a desire pressure drop.
Prior Art of Record
The following prior art is made of record and not relied upon is considered to be pertinent to applicant’s invention:
●Cullen teaches a conical filter, for a pipe, made of absorbent paper;
●Wright teachers a filter for a smoking device having longitudinal and conical portions;
●Deal teaches a conical filter for a smoking article having a constant pressure drop;
●Borowski teaches a tapered filter for a smoking article to directs airflow.
●Eliasz teaches a cigarette having a tapered mouthpiece having filter 24 therein;
●Dock teaches a filtering mass for tobacco smoke held within a tapered housing;
●Morgenstern teaches various shapes for a filter for a cigarette;
●Hopper teaches a conical filter, of a smoking article, of cellulosic tow (Background);
●Boegger teaches cone filters for pipelines having a single or multiple layers;
●Handbook of Filter Media discusses vacuum filters of paper to collect fine particles.
Response Section
The amendments and comments filed 9-16-26 have been entered and fully considered.
With respect to the comments at page 7, paragraph 4, to page 8, line 8: claims 1, 7 and 8 do not relate the airflow (recited in claims 1, 7, and 8) to the diameters of the first and second ends. Instant claims 1, 7, and 8 encompass the structural arrangement of Woodman -- airflow first meets with the smaller diameter and then successively meets with the larger diameter.
With respect to the comments at page 8, line 9, to page 9, line 2: Thesing teaches that the inner portion has a resistance to the airflow and thus can retard the airflow (col2 Lns37-48; col3 Lns30-35; Fig1).
Also in response:
●Thesing indicates airflow mostly through the inner portion or the outer portion 22 (c3
L21-35) (Note: in either case, the inner portion still has its resistance to airflow -- thus the inner portion still retards airflow).
●Woodman teaches airflow mostly through the inner portion 20 (para48).
Thus, the inner portions of Thesing and Woodman have the function of airflow mostly through the inner portion.
Also in response: the Office action does not indicate replacing the inner member of Thesing with the inner member 20 of Woodman -- as applicant recites at page 8 (last two lines) to page 9 (line 2). The Office action indicate providing in Thesing a change in shape of the inner portion (tapered-shape). Woodman teaches using taper-shape allows one to develop a pressure drop. Woodman teaches a pressure drop helps with airflow direction.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA L GRAY/Primary Examiner, Art Unit 1745
