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 .
Status of Claims
This action is in response to applicant’s amendments and arguments filed on 8/20/2026. Claims 1 – 15 are pending and are the subject of this office action. This is the second office action on the merits of the claims.
Response to Arguments
Applicant’s arguments, see page 6 lines 12 - 26, filed 8/20/2026, with respect to the rejections of claims 1 - 11 under U.S.C. 102(a)(1) and U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of US 20210195939 A1 (Volgger) and further in view of US 20230000140 A1 (Papakyrillou), US 20190059443 A1 (Bachman), US 20220400742 A1 (Lisan) and Applicant Admitted Prior Art (AAPA).
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, 2, 5, 6, 8, 9, 12, 13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20210195939 A1 (Volgger).
Regarding claims 1, 2, 12 and 15 Volgger teaches a fiber-based web material for segments in smoking articles. Fiber-based web materials describes all web-shaped materials from staple fibers that can be formed into segments for smoking articles. Suitable fiber-based web materials are in particular paper or nonwovens (paragraph 15). Volgger also teaches that a segment of a smoking article is the part that does not contain the aerosol-forming material, but, serves to transfer, cool or filter the aerosol (paragraph 6). Therefore, the segment reads on the claim limitation of a filter comprising a paper substrate comprising a base web. Additionally, Volgger teaches that the web material can be coated with polyvinyl alcohol or a polysaccharide, whereupon the filtration efficiency for water is reduced and the aerosol is thus dried less. The polysaccharide is selected from the group consisting of starch, carboxymethylcellulose, guar, dextrin, pectin or mixtures thereof (paragraph 27). The starch, guar, and pectin read on the claim limitation from claim 1 of a natural polysaccharide. Table 2 of Volgger also teaches several embodiments of the web material with densities above 431 mg/cm3 (1 kg/m3 = 1 mg/cm3) including web materials 1 – 6, 12 – 13, 16 – 21, and 24 – 25. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
Regarding claims 5 and 13, Volgger teaches a filter as described by claim 1. Table 2 of Volgger further teaches three embodiments (web material No. 1 – 3) of its web material with densities between 433 mg/cm3 and 500 mg/cm3. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
Regarding claim 6, Volgger teaches a filter as described by claim 1. Volgger further teaches that the basis weight of the web material is particularly preferably between 25 g/cm2 and 50 g/cm2 (paragraph 31). If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
Regarding claim 8, Volgger teaches a filter as described by claim 1. Volgger further teaches that the object of their invention is to provide a segment (filter) for a smoking article (paragraph 13).
Regarding claim 9, Volgger teaches a filter as described by claim 8. Volgger further teaches that a preferred embodiment of their invention is a filter cigarette comprising at least a segment (filter) according to their invention and a further segment which contains tobacco. The segment according to the invention is a segment of the filter of a filter cigarette (paragraph 49).
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger) as applied to claim 1 above, and further in view of US 20230000140 A1 (Papakyrillou).
Regarding claim 3, Volgger teaches a filter as described by claim 1. Volgger does not teach that a natural polysaccharide is present in an amount of from 0.5% - 20% by weight of the base web. Papakyrillou teaches a fibrous filtration material formed with polyhydroxyalkonate (PHA) fibers. The PHA fibers may be combined with a plurality of fibers of an additional biodegradable polymer to form the filter segment with the biodegradable polymer selected from the group consisting of starch, polybutylene succinate (PBS), polyglycolide (PGA), polyvinyl alcohol (PVOH/PVA), viscose, regenerated cellulose, polysaccharides, cellulose acetate with a degree of substitution of less than 2.1, polyamides, protein-based biopolymers, chitosan-chitin based biopolymers, and combinations thereof (paragraph 45). Starch, polysaccharides, and chitosan-chitin biopolymers read on the claim limitation of a natural polysaccharide. The PHA filter formed of polyhydroxyalkoates comprises at least 10% by weight of one such additional biodegradable polymer (paragraph 46). If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter of Volgger with 10% by weight of a biodegradable polysaccharide as suggested by Papakyrillou because Papakyrillou indicates that including one or more of these ingredients in the blend from which the fibrous material of the filter segment is formed further contributes to enhancing biodegradability of the filter segment and of the aerosol-generating article as a whole (paragraph 47).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger) as applied to claim 1 above, and further in view of US 20190059443 A1 (Bachman).
Volgger teaches a filter as described by claim 1. Volgger does not teach a filter wherein the paper substrate has an air permeability of from 350 - 3550 CU. Bachman teaches a paper which is proposed for use as a filter paper wherein the air permeability of the filter paper is between 500 cm/min kPa and 15,000 cm/min kPa, and preferably between 1,000 cm/min kPa and 9,000 cm/min kPa (paragraphs 13 and 99). The units of cm/min kPa are equivalent to 1 Coresta Unit (CU). This range overlaps with the claimed range of 350 - 3,550 CU. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter paper described by Volgger to have the air permeability taught by Bachman, with a reasonable expectation of success, because Bachman states that the air permeability of the filter paper is an essential parameter in controlling the draw resistance of the paper filter and thus its filtration efficiency over a wide range (paragraph 17). And Bachman additionally, states that this air permeability allows for a comparable draw resistance which is similar to a filter formed from cellulose acetate (paragraph 8).
Claims 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger) as applied to claims 1 and 8 above, and further in view of Applicant Admitted Prior Art (AAPA).
Regarding claim 7, Volgger teaches that fiber-based web materials were manufactured according to processes known in the art (paragraph 58). Applicant admitted prior art teaches that the wetlaid process and the wetlace process are conventional processes known to the skilled person in the art, and that a skilled person knows how to adapt the parameters of these processes to produce a base web (instant specification paragraph 65).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to produce the paper substrate of Volgger by a wetlace or wetlaid process as described by AAPA since the steps for produce the paper substrate are well known in the art.
Regarding claim 11, Volgger teaches that the segment (filter) according to the invention can be manufactured in accordance with processes which are known in the art (paragraph 51). AAPA teaches the steps for producing the filter, outlined as steps a – e, are well known to a person skilled in the art (instant specification – paragraph 65 step a, paragraph 68 step b, paragraph 72 steps c – e). As such, it would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to produce the filter described by Volgger using the steps disclosed by AAPA since the steps for producing the filter are well known in the art.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger) as applied to claim 8 above, and further in view of US 20220400742 A1 (Lisan).
Taniguchi teaches a filter for a smoking article as described in claim 8. Taniguchi does not teach a vaping article comprising a filter. Lisan teaches an aerosol-generating article comprising a charge of aerosol-generating substrate and a filter (paragraph 23), and further states that although the invention is described primarily with respect to heat-not-burn type e-cigarettes, the filter component is also applicable for use in other types of e-cigarettes or conventional cigarettes (paragraph 58).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter described by Taniguchi to be used in an aerosol-generating device described by Lisan, with reasonable expectation of success, because Lisan indicates that vape users report a need for cooler aerosol upon inhalation, which may be due to the shorter distance travelled by aerosols in a vaping article from the heating point of the aerosol-generating material as compared to conventional cigarettes (paragraph 4). Vape filters can help allow sufficient cooling of aerosols generated by such articles and provide a more enjoyable vaping experience (paragraph 6).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger).
Regarding claim 14, Volgger teaches a filter as described by claim 1. Volgger further teaches that the density of their web material is highly particularly preferably between 300 kg/m3 and 600 kg/m3. As 1 mg/cm3 = 1 kg/m3 this overlaps the claimed range of 435 – 465 mg/cm3 (paragraph 34). Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brendon Juengst whose telephone number is (571)272-8750. The examiner can normally be reached Mon-Fri 8:30-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at 571-270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRENDON THOMAS JUENGST/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
