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 § 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 1-3, and 7-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by EP 1839507 A1 (Taniguchi and Hibi 2007).
Regarding claims 1 and 7, Taniguchi teaches a cigarette filter material (paragraph 20) comprising a base web (a paper substate, paragraph 36) coated with a coating composition containing a natural polysaccharide (chitosan) having an amino group and a polar solvent (paragraph 20). Taniguchi further teaches that the substrate may be obtained by making a staple from the fiber and forming the staple into a sheet through a dry or wet nonwoven fabric process, or by mixing the staple with a beat pulp to give a slurry and forming the slurry into a paper (paragraph 36).
Regarding claims 2 and 3, Taniguchi teaches the polysaccharide having an amino group may be a chitosan (paragraphs 20, 47), and the cigarette filter material may contain about 2 to 20 parts by weight of the polysaccharide having an amino group relative to 100 parts by weight of the substrate (1.6-16% polysaccharide by weight) (paragraph 20).
Regarding claims 8 and 9, Taniguchi teaches that the cigarette filter material of the present invention is useful for constituting a cigarette filter and a cigarette, and further recites a cigarette which comprises a cigarette filter (paragraph 124 and claim 14).
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 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 4 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1839507 A1 (Taniguchi and Hibi 2007) as applied to claim 1, and further in view of US 2019/0059443 A1 (Bachman 2019).
Taniguchi teaches a filter comprising a paper substrate which comprises both a base web and a natural polysaccharide (paragraphs 20 and 36). Taniguchi 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 Taniguchi 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).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1839507 A1 (Taniguchi and Hibi 2007) as applied to claim 1, and further in view of US 2019/0045838 A1 (Nappi and Jordil 2019).
Taniguchi teaches a filter comprising a paper substrate which comprises both a base web and a natural polysaccharide (paragraphs 20 and 36). Taniguchi does not teach a filter wherein the paper substrate has a density higher than 431 mg/cm3. Nappi teaches a fibrous filtration material in the hollow tube segment of a smoking article with a density of at least 0.6 g/cm3, more preferably at least about 0.7 g/cm3, more preferably at least about 0.8g/cm3 (paragraph 19, claims 4 & 5). 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 Taniguchi with the filter paper described by Nappi, with reasonably expectation of success, because Nappi indicates that providing an increased density compared to conventional fibrous filtration segments advantageously enables the desired rigidity and moisture resistance to be achieved (paragraph 20).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1839507 A1 (Taniguchi and Hibi 2007) as applied to claim 1 above, and further in view of US 20200397040 A1 (Kitaoka 2020).
Taniguchi teaches a filter comprising a paper substrate which comprises both a base web and a natural polysaccharide as taught for claim 1 above (paragraphs 20 and 36). Taniguchi does not teach a filter wherein the paper substrate has a basis weight from 10 – 60 g/cm2. Kitaoka teaches a sheet like material (filtration substrate) that may have a dry basis weight in the range of 30 – 60 g/cm2 (paragraph 48) which anticipates the claimed ranged of 10-60 g/cm2.
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 Taniguchi to have a base weight of 30-60 g/cm2 described by Kitaoka, with reasonable expectation of success, because Kitaoka indicates that if the basis weight is too low, filter production may be difficult due to a low tensile strength thereof. If the basis weight is too high, the flexibility of the sheet-like material may be too low and no appropriate pressure drop may be achieved (paragraph 48).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1839507 A1 (Taniguchi and Hibi 2007) as applied to claim 1 above, and further in view of US 2022/0400742 A1 (Lisan 2022).
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 11 is rejected under 35 U.S.C. 103 as being unpatentable over EP 1839507 A1 (Taniguchi and Hibi 2007) as applied to claim 8, and further in view of Applicant Admitted Prior Art (AAPA).
Taniguchi teaches that the cigarette filter may be formed by a conventional method depending on the structure of the substrate or the filter (paragraph 115). 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 invention to produce the filter described by Taniguchi using the steps disclosed by AAPA since the steps for producing the filter are well known in the art.
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.
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/BRENDON THOMAS JUENGST/ Examiner, Art Unit 1749
/KATELYN W SMITH/ Supervisory Patent Examiner, Art Unit 1749
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