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
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.
Claims 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger et al), and further in view of EP 1839507 A1 (Taniguchi et al).
Regarding claim 1, Volgger teaches a segment of a smoking article, in particular to a segment for cooling or filtration of the aerosol flowing in the smoking article (paragraph 1), in which suitable fiber-based web materials are in particular paper or non-wovens (paragraph 15). In a preferred embodiment, the web material is coated with a polyvinyl alcohol, or a polysaccharide (paragraph 27). In a particularly preferred embodiment, the polysaccharide is selected from the group consisting of starch, carboxymethylcellulose, guar, dextrin, pectin, or mixtures thereof (paragraph 27). Volgger does not teach a filter wherein the natural starch is present in an amount of from 1.2% to 3.8% by weight of the base web. Taniguchi teaches a cigarette filter coated with a polysaccharide in which the filter material may contain about 2-20 parts by weight of the polysaccharide having an amino group relative to 100 parts by weight of the substrate (1.6-16% by weight) (paragraph 20). 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 polysaccharide in the filter of Volgger to have a weight percentage of Taniguchi because Taniguchi states that too high of a polysaccharide content sometimes increases adsorption of both tar and nicotine impacting flavor and nicotine content of the smoke (paragraph 58). Additionally, overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05
Regarding claim 3, Table 2 of Volgger lists densities of filter papers with samples 16-21 and 24-25 being filter papers coated with starch having densities of 581.8 – 650.0 kg/m3 (with 1kg/m3 being equal to 1mg/cm3) which anticipates the claimed range of greater than 431mg/cm3.
Regarding claim 4, Volgger teaches that the web material has a basis weight particularly between 25g/cm2 and 50g/cm2 (paragraph 31). Table 2 of Volgger also provides basis weights for the paper substrates with samples 16-21 and 24-25 being filter papers coated with starch having basis weights between 23g/cm2 and 32g/cm2 which anticipates the claimed range of 10 – 60 g/cm2.
Regarding claim 5, Volgger does not teach a filter wherein the paper substrate is obtainable by a wetlaid process or a wetlace process. Taniguchi teaches the substrate having the paper structure may be obtainable by making a staple from the fiber and forming the staple into a sheet throughout a dry or wet non-woven fabric process or by mixing the staple with a beat pulp to give a slurry and forming the slurry into a paper (paragraph 36). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use the paper production process described by Taniguchi, to produce the filter utilized by Volgger because wetlaid and wetlace paper production processes are commonly used methods of paper production and are well known to someone of ordinary skill in the art. Furthermore, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production (MPEP 2113).
Regarding claim 6, Volgger teaches that the invention relates to a segment of a smoking article, in particular to a segment for cooling or filtration of the aerosol flowing in the smoking article (paragraph 1).
Regarding claim 7, Volgger teaches that in a preferred embodiment, the smoking article is a filter cigarette comprising at least a segment according to the invention and a further segment which to contains tobacco (paragraph 49).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger et al) and EP 1839507 A1 (Taniguchi et al) as applied to claim 1, and further in view of US 20120160255 A1 (Ghanavi 2021).
Volgger modified by Taniguchi teaches a filter containing a base web coated with starch. Volgger does not teach a filter wherein the starch is hydroxy ethyl starch or oxidized waxy potato starch or mixtures thereof. Ghanavi teaches an electrospun fiber mat cigarette filter for removing toxic compounds from a cigarette smoke that comprises a biological macromolecule, a plurality of additives, a solvent and an acceptable polymeric carrier (paragraph 26). The plurality of additives comprises chitosan, active charcoal, anti-oxidants, vitamins, nucleic acids, drugs, peptides, proteins, vegetable oil, humectants, polysaccharides, dextran, gum arabic, pectin fluid gelatin and hydroxyethyl starch (paragraph 31). 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 polysaccharide cigarette filter of Volgger and Taniguchi with the hydroxy ethyl starch additive of Ghanavi because Ghanavi shows hydroxyethyl starch as a known polysaccharide to use as an additive of cigarette filters, as all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by simple substitution of one known element for another and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 20210195939 A1 (Volgger et al 2021), and EP 1839507 A1 (Taniguchi et al) as applied to claim 6, and further in view of US 20220400742 A1 (Lisan 2022).
Volgger modified by Taniguchi teaches a filter comprising a base web coated with starch used as a cigarette filter. Volgger 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). Lisan further states that although the invention is described primarily with respect to heat-not-burn tube 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 cigarette filter of Volgger and Taniguchi to be used in the vape of Lisan because Lisan states 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 convention 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 9 is rejected under 35 U.S.C 103 as being unpatentable over US 20210195939 A1 (Volgger et al), and EP 1839507 A1 (Taniguchi et al) as applied to claim 6, and further in view of Applicant Admitted Prior Art (AAPA).
Volgger modified by Taniguchi teaches a filter comprising a base web coated by a starch used as a cigarette filter. Taniguchi further teaches that the cigarette filter may be formed by a conventional method depending on the structure of substrate of the filter (paragraph 115). AAPA teaches steps for producing the filter, outlined as steps a – e, and states that these steps are well known to a person skilled in the art (instant specification – paragraph 58 step a, paragraph 61 step b, paragraph 65, step 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 with the steps disclosed by the AAPA since the steps for producing the filter are well known in the art.
Conclusion
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/BRENDON THOMAS JUENGST/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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