DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-3 and 5-8 are pending. Claim 1 has been amended.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 7/21/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 7/21/2026 have been fully considered.
Applicant’s arguments concerning the objection to claim 1 have been fully considered but are not persuasive. Applicant argues that the claim has been amended “in order to correct the deficiencies pointed out by the Examiner”. This argument is not persuasive as Applicant did not amend the objectionable language, “in the paper core over the paper core”, in claim 1.
Applicant’s arguments with respect to the rejection of claim 1 under 35 U.S.C. 102 have been fully considered and are persuasive. Applicant has amended claim 1 to include limitations that were not previously presented and are not anticipated by Wang, as Wang does not explicitly disclose that an area of the liner is bonded by an adhesive to the inner periphery of the paper core. Therefore, the rejection has been withdrawn.
Applicant’s arguments with respect to the rejections under 35 U.S.C. 10 over Wang have been fully considered but are not persuasive. Applicant argues that “it would not be obvious to modify Wang such that the scented component 16 is bonded to the inner periphery because . . . it is an insert that is an optional component”, and “If it was bonded by an adhesive to the tube, it would not be replaceable” (emphasis added). This argument is not persuasive as Applicant has not presented evidence that an “optional” component is required to be “replaceable”. Further, Wang discloses that components may be bonded to the inner periphery of the paper core (¶ 0055).
Claim Objections
Claim 1 is objected to because of the following informalities: "in the paper core over the paper core" should be "in the paper core". Appropriate correction is required.
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.
Claims 1-3 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2020/0305497 A1).
Regarding claim 1, Wang discloses a flavor inhaling article (“preformed cartridge”, ¶ 0052) comprising:
a flavor element (“plant component 12”, Fig. 4, ¶ 0052, 0062) to be heated without burning (“low temperature non-combustion”, ¶ 0055); and
a tubular element (combination of “tube 11” and “scented component 16”, Fig. 4, ¶ 0052, 0062-0063) having an airflow path (“airflow”, ¶ 0004), wherein the tubular element includes
a hollow paper core (“tube 11” is a “paper tube”, ¶ 0052) having a cylindrical shape (Fig. 4), and
a paper liner (“scented component 16” is a “scented paper”, Fig. 4, ¶ 0063) disposed in the paper core and extending along an axial direction (Fig. 4), and
a total cross-sectional length of the liner in a tube radial direction of the paper core is greater than an inside diameter of the paper core (Fig. 4),
wherein an area of the liner, which can contact with an inner periphery of the paper core, is bonded to the inner periphery of the paper core over the liner in the axial direction (Fig. 4, ¶ 0063-0064).
Wang does not explicitly disclose that the area of the liner is bonded to the inner periphery of the paper core by an adhesive. However, Wang does disclose that components may be bonded to the inner periphery of the paper core by an adhesive (“The plant component can then be adhered to the tube 11 with a food grade adhesive”, ¶ 0055). One of ordinary skill in the art would have understood that there was a benefit to using an adhesive to bond components to the inner periphery of the paper core in that it provides a strong connection, preventing the component from accidentally being dislodged. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use an adhesive to bond the area of the liner to the inner periphery of the paper core, in order to obtain this benefit.
Regarding claim 2, Wang discloses the flavor inhaling article according to claim 1, as stated above. Wang further discloses wherein the tubular element is disposed adjacent to the flavor element (“lower edge 44” of “scented component 16” abuts “lining mesh opening 45” of “lining mesh 17” of “plant component 12”, ¶ 0061, 0063).
Regarding claim 3, Wang discloses the flavor inhaling article according to claim 1, as stated above. Wang further discloses wherein an additive (“perfume” additive in “scented component 16”, ¶ 0063) is sorbed to the liner.
Regarding claim 7, Wang discloses the flavor inhaling article according to claim 1, as stated above. Wang discloses that a total cross-sectional length of the liner in a tube radial direction of the paper core is greater than an inside diameter of the paper core (Fig. 4, ¶ 0063). However, Wang does not explicitly disclose wherein a total cross-sectional length of the liner in the tube radial direction is greater than or equal to twice the inside diameter of the paper core. Wang teaches that the folded liner enhances the aroma of the smoke by transferring scent from the surface of the liner (¶ 0064). The efficacy of the liner for this result depends on the total cross-sectional length of the liner. If the total cross-sectional length of the liner is too short, the liner will be too small to impart a sufficient amount of aroma. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the total cross-sectional length of the liner in the tube radial direction such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 8, Wang discloses the flavor inhaling article according to claim 1, as stated above. Wang further discloses wherein a cross section of the liner in the tube radial direction has an M-shape (“shape of an M” formed by folds 41, 42, and 43, Fig. 4, ¶ 0063). With regard to the cross section having an “S-shape” (two folds) instead of an “M-shape” (three folds), absent persuasive evidence that the particular configuration of the claimed cross section is significant, it is deemed to be an obvious matter of design choice (see MPEP § 2144.04(IV)(B)).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2020/0305497 A1) as applied to claim 1 above, and further in view of Shinozaki et al. (US 2014/0366901 A1).
Regarding claim 5, Wang discloses the flavor inhaling article according to claim 1, as stated above. Wang also discloses that the liner can be made of thick paper (“card stock”, ¶ 0064). However, Wang does not explicitly disclose the paper thickness of the liner. Shinozaki, in the same field of endeavor, teaches thick paper with a paper thickness that ranges from 0.15 mm to 0.5 mm (“thick paper has . . . a thickness equal to 150 μm or more and equal to 500 μm or less”, ¶ 0010). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the liner by Wang to have the thickness taught by Shinozaki, as it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP § 2144.04(IV)(A), citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). The range from 0.15 mm to 0.5 mm falls within the claimed range of from 0.05 mm to 1 mm (MPEP § 2131.03).
Regarding claim 6, Wang discloses the flavor inhaling article according to claim 1, as stated above. Wang also discloses that the liner can be made of thick paper (“card stock”, ¶ 0064). However, Wang does not explicitly disclose the basis weight of the liner. Shinozaki, in the same field of endeavor, teaches thick paper with a basis weight that ranges from 100 gsm to 300 gsm (“thick paper has a basis weight equal to 100 g/m2 or more and equal to 300 g/m2 or less”, ¶ 0010). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the liner taught by Wang to have the basis weight taught by Shinozaki, as it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP § 2144.04(IV)(A), citing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). The range from 100 gsm to 300 gsm overlaps the claimed range of from 80 gsm to 120 gsm (MPEP § 2144.05(I)).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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