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 .
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over KR 102177116 (hereinafter referred to as “Ahn et al”; reference cited on Applicant’s IDS filed November 7, 2023, but see attached Mechanical English Translation) in view of TW 104143115 (hereinafter referred to as “Papakyrillou”) (see attached Mechanical English Translation).
Regarding independent claim 1, Ahn et al discloses a cigarette filter for use in an aerosol generating article, wherein said filter is formed from crimping a paper upon which is sprayed a liquid moisturizer (read: wetting agent) which may have a nicotine salt added thereto. The paper is then rolled into a wrinkled shape to form a filter (read: paper filter) and circumscribed with a wrapper (read: filter wrapper) (see abstract, para. [0018]) (corresponding to the claimed “[a] cigarette filter, comprising: a paper filter formed by rolling base paper; a wetting agent applied to at least a portion of a surface of the paper filter...a filter wrapper enveloping the paper filter”).
As disclosed in para. [0116], it is apparent that the nicotine salt added to the moisturizer is in solid granular form as said salt is disclosed as being dissolved in the moisturizer (corresponding to the claimed “granules bound to the wetting agent”).
Lastly, while Ahn et al does not clearly state that its paper has a width laying in the range of 200-250 mm, the reference does indicate that its paper is rolled into a wrinkled shape with a diameter similar to that of a cigarette rod (see para. [0055]). Further, Papakyrillou discloses a smoking article which includes a filter (read: cigarette filter) comprising filtration material that is downstream of smokable material. The filtration material comprises a sheet of cellulosic (paper) material (read: paper filter) that is folded over itself (read: formed by rolling) and filled into the cylindrical space in a substantially circular cross section. In order to accomplish this near-complete filling of the cylindrical space, its cellulosic (paper) material width lies in the range of 180-220 mm (see Description for Fig. 2 in Papakyrillou). Since Fig. 2 of Papakyrillou appears to disclose a paper which is rolled into a shape that has a diameter similar to that of a cigarette rod, which is also taught in Ahn et al, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have chosen to adapt the same paper width for its paper filter that Papakyrillou has disclosed as being used for its paper width to accomplish a similar result. Note: 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). See MPEP 2144.05. Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen a paper width within the range disclosed in Papakyrillou and, in particular, that which is included by the overlapping range (corresponding to the claimed “wherein a width of the base paper is 200 millimeters (mm) to 250 mm”).
Regarding claim 2, the modified Ahn et al cigarette filter fails to disclose the claimed basis weight for its crimped paper; however, Papakyrillou discloses that the basis weight of its cellulosic (paper) material may be any weight that is suitable, but preferably lies in a range from about 20 to about 60 g/m2 (see Mechanical English disclosure). It would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have provided the modified Ahn et al paper filter material with a basis weight that is the same as that of Papakyrillou and arrived at the claimed range after undergoing routine experimentation to arrive at the optimal basis weight of the modified Ahn et al paper filter which would allow for optimal heaviness of such filter to enable sufficient wrinkling for positioning within the wrapper (corresponding to the claimed “wherein the base paper has a basis weight of 15 g/m2 to 30 g/m2”).
Regarding claim 3, as the modified Ahn et al filter exhibits the claimed basis weight and width parameters (see above), it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have been motivated to arrive at the claimed product of width and basis weight parameters in an effort to construct a filter having the optimal grammage (heaviness/bulk) and also fill capacity within the wrapper to ensure a quality filter product (corresponding to the claimed “wherein a product of the width and a basis weight of the base paper is 5.2 g/m to 5.6 g/m”).
Regarding claim 5, Ahn et al discloses that its moisturizer (read: wetting agent) may be a mixture of glycerin and propylene glycol (see para. [0016]). As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen this mixture to be applied to the filter of the modified Ahn et al cigarette filter (corresponding to the claimed “wherein the wetting agent comprises at least one of glycerin…or propylene glycol”).
Regarding claim 6, Ahn et al is silent regarding the applied amount (mg/mm) of moisturizer (read: wetting agent) to its cigarette filter, but it does state that applying the moisturizer evenly can be important for achieving desired suction resistance (see para. [0077]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have optimized this amount and arrived upon the claimed range after determining that this range rendered superior resistance to draw (corresponding to the claimed “wherein an applied amount of the wetting agent is 1 mg/mm to 5 mg/mm based on longitudinal direction of the paper filter”).
Regarding claim 7, Ahn et al is silent regarding the degree of water resistance of its paper cigarette filter; however, Papakyrillou discloses that because paper filters have a high-water absorption and retention property, it can result in a dry harsh taste in the mainstream smoke or aerosol generated by the smoking article. Therefore, it is desirable to provide hydrophobic paper material in the filters of smoking articles to reduce wetting along with the negative taste perception experienced by the user during smoking (see first 6 paragraphs of the Mechanical English translation). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have fabricated the paper filter of Ahn et al with overall hydrophobic qualities thus rendering the overall water resistance of the filter to be greater than 5% (corresponding to the claimed “wherein the paper filter has a water resistance of 5% or greater”).
Regarding claim 8, Ahn et al is silent regarding whether its cigarette filter comprises a flavoring agent; however, it does disclose that the fourth part (340) of its cigarette may include filter material and may also produce a flavor due to flavoring liquid (read: flavoring agent) being applied thereto (see paras. [0099]-[0100]). Therefore, since this filter-containing part of the Ahn et al cigarette may comprise a flavoring agent, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have also considered adding a flavoring agent to another part of the cigarette having filter material, such as the cigarette filter (310) itself, in order to further impart flavoring so as to enhance the organoleptic experience for the user (corresponding to the claimed “wherein the paper filter comprises a flavoring agent”).
Regarding independent claim 9, in a secondary embodiment, Ahn et al discloses an aerosol-generating article (300) (read: cigarette) that may include a first portion (310) which corresponds to a cigarette filter and second through fourth portions (320, 330, 340) (read: cigarette column) which may comprise the remainder of the aerosol-generating article (300) (see paras. [0090]-[0094] (corresponding to the claimed “[a] cigarette, comprising: a cigarette column portion; a cigarette filter portion disposed on one side of the cigarette column portion and comprising one or more cigarette filters”).
Ahn et al discloses that its aerosol-generating article (300) may include at least one of a first wrapper (350) (read: tip paper) which, as seen from Fig. 3, envelops an entirety of first portion (310) (read: cigarette filter portion) and all of the second portion (320) (read: a portion of the cigarette column portion) (corresponding to the claimed “a tip paper enveloping a portion of the cigarette column portion and the cigarette filter portion”).
The first portion (310) (read: one or more cigarette filters) of Ahn et al can be formed from crimping a paper upon which is sprayed a liquid moisturizer (read: wetting agent) which may have a nicotine salt added thereto. The paper (read: paper filter) is then rolled into a wrinkled shape and circumscribed with a wrapper (read: filter wrapper) (see also abstract, Fig.4 and para. [0104]) (corresponding to the claimed “wherein at least one of the one or more cigarette filters comprises: a paper filter formed by rolling base paper; a wetting agent applied to at least a portion of a surface of the paper filter...a filter wrapper enveloping the paper filter”).
As disclosed in para. [0116], it is apparent that the nicotine salt added to the moisturizer is in a granular form as said salt is disclosed as being dissolved (i.e., as a solid) in the moisturizer (corresponding to the claimed “granules bound to the wetting agent”).
Lastly, while Ahn et al does not clearly state that its paper has a width laying in the range of 200-250 mm (as claimed), the reference does indicate that its paper is rolled into a wrinkled shape with a diameter similar to that of a cigarette rod (see para. [0055]). Further, Papakyrillou discloses a smoking article which includes a filter (read: cigarette filter) comprising filtration material that is downstream of the smokable material. The filtration material comprises a sheet of cellulosic (paper) material (read: paper filter) that is folded over itself (read: formed by rolling) and filled into the cylindrical space in a substantially circular cross section. In order to accomplish this near complete filling of the cylindrical space, its cellulosic (paper) material width lies in the range of 180-220 mm (see Description for Fig.2 in Papakyrillou). Since, Fig. 2 of Papakyrillou appears to disclose a paper which is rolled into a shape that has a diameter similar to that of a cigarette rod, which is also taught in Ahn et al, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen to adapt the same paper width for its paper filter that Papakyrillou has disclosed as being used for its paper width to accomplish a similar result. Note: 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). See MPEP 2144.05. Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen any paper with within the range disclosed in Papakyrillou and, in particular, that which is included by the overlapping range (corresponding to the claimed “wherein a width of the base paper is 200 millimeters (mm) to 250 mm”).
Regarding claim 10, Ahn et al discloses that its nicotine salts (read: granules) are preferably added to the moisturizer at a concentration of 1% (see paras. [0115]). Absent any evidence to the contrary, it is presumed that this percentage concentration is based on the cigarette filter (first portion, 310) as a whole. As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have utilized this same amount of nicotine salt in the modified Ahn et al filter (corresponding to the claimed “wherein the granules account for a mass percentage of 0.3 (mass %) to 5 mass %, based on an entirety of the cigarette filter portion”).
Regarding claim 11, Ahn et al discloses that its first wrapper (350) (read: tip paper) may include at least one of aluminum, copper, zinc, gold, silver or iron (see para. [0106]). As such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have utilized one of these same metals in the modified Ahn et al filter (corresponding to the claimed “wherein the tip paper comprises at least one of aluminum (Al), copper (Cu), zinc (Zn), gold (Au), or iron (Fe)”).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over KR 102177116 (hereinafter referred to as “Ahn et al”) in view of TW 104143115 (hereinafter referred to as “Papakyrillou”), further in view of Inagaki et al (US. Pat. App. Pub. 2020/0107574).
Regarding claim 4, the modified Ahn et al cigarette filter is rolled into a “wrinkled shape” with a diameter that is similar to that of a cigarette rod, but it fails to show that its paper filter has a circumference of 20 mm to 25 mm. The Inagaki et al reference, however, which discloses a cigarette filter comprising a crimped filtration material rolled into a cylinder, shows that smoking article filters are known to have a circumference of 24 mm (see para. [0066]). Hence, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed invention to have chosen this specific circumference to manufacture the modified Ahn et al filter as such circumference is known in the tobacco art (corresponding to the claimed “wherein the paper filter comprises a cylindrical shape having a circumference of 20 mm to 25 mm”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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/DIONNE W. MAYES/ Primary Examiner, Art Unit 1747