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 .
Response to Amendment
Amendment filed 6/4/2026 has been entered and fully considered. Claims 1-5 and 7-9 are pending. Claim 6 is cancelled. Claim 1 is amended. No new matter is added.
Response to Arguments
Applicant's arguments filed 6/4/2026 have been fully considered but they are not persuasive.
Applicant argues that Kuersteiner is directed to a filter for a smoking article that provides an improved sensory experience for consumers, such as improved chewing experience. However, the claimed invention is configured to be pressed upon insertion of the non-combustion-heating-type device. Kuersteiner fails to teach a compression change rate of multiple segments of an article. Moreover, Rasouli is directed to a smoking article having a tobacco substrate including tobacco having a tobacco density of 15 mg/cm3 or less and a hardness of 60% or greater. However, Rasouli does not teach or suggest deformation behavior across multiple segments of an article.
Examiner respectfully disagrees.
The courts have generally held that a range can be disclosed in multiple prior art references instead of in a single prior art reference. See, Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322, 73 USPQ2d 1225, 1228 (Fed. Cir. 2004). MPEP 2144.05, I. Thus, in the instant case, prior art that individually disclose a single component having an overlapping compression change, does not teach away from combining multiple prior art to arrive at the claimed invention. Specifically, Kuersteiner et al. discloses the compression change rate of the filter segment while Rasouli et al. discloses a tobacco rod having a compression change rate. While individually each references discloses a compression rate of a single part of the flavor generating article, their combined teachings disclose a flavor generating article with multiple components having individual and distinct compression change rates.
Further, the courts have generally held that "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). MPEP 2112.
Thus, the compression of the flavor inhalation article while being inserted into the electrical heating type device does not render the invention patentable. The prior art (see above) teaches the compression rate of change for the filter and the tobacco rod that overlaps with the claimed compression rate of change. Thus, the new use (e.g., for insertion into the heating device) does not render the compression rate of change patentable.
It is further noted that the claim is directed to the compression rate of change as a property of the flavor inhalation article. These properties have been discussed in the art (see rejection of claim 1), thus any new uses related to said properties does not become patentable.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
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Claims 1-5, 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4 and 6-9 of copending Application No. 18/478,901 in view of LORD et al. (WO 2020/089091 A1).
With respect to claim 1, copending Application No. 18/478,901 claims a non-combustion-heating-type flavor inhalation product comprising: an electrical heating type device comprising an inductor for electromagnetic induction heating; and a non-combustion-heating-type flavor inhalation article used together with the electrical heating type device, wherein the electrical heating type device comprises an inductor for electromagnetic induction heating, a power source that supplies operation power to the inductor, and a heating chamber into which the non-combustion-heating-type flavor inhalation article can be inserted via an insertion slot, wherein at least two protrusions are provided on a side wall that forms a cavity of the chamber, and a height of the protrusions from the side wall is greater than or equal to 0.3 mm and less than or equal to 2.0 mm, wherein the non-combustion-heating-type flavor inhalation article includes a flavor-generating segment that includes a flavor-generating-segment filler containing an aerosol-source material and a plate-shaped susceptor for electromagnetic induction heating of the flavor-generating-segment filler, and a mouthpiece segment for inhaling a flavor component, and wherein a compression change rate of each of the segments, as measured by pressing each airflow-direction central part of the flavor-generating segment and the mouthpiece segment of the non-combustion-heating-type flavor inhalation article in accordance with a compression change rate measurement method below, is 70% or greater, compression change rate measurement method: a load F of 2 kgf is applied to 10 or 20 samples simultaneously, the 10 or 20 samples being arranged side by side in a horizontal direction, from an upper side to a lower side by using a measuring instrument DD60A manufactured by Borgwaldt Co., Ltd.; after the load F has been applied for 5 seconds, an average of diameters of rod portions is measured; a compression change rate (%) is expressed by a formula below; compression change rate (%) = 100×(Dd (diameter after deformation))/(Ds (diameter before deformation)) where Dd stands for a diameter of a rod portion that has been reduced as a result of a load F being applied to the rod portion, and Ds stands for a diameter of the rod portion before the load F is applied; in the method, measurement is performed 10 times for each set of 10 or 20 samples, and an average value of results of the measurement performed 10 times is used as a measurement result (Claim 1). wherein the mouthpiece segment includes a cooling segment and a filter segment, and the cooling segment is positioned upstream from the filter segment, wherein the non-combustion-heating-type flavor inhalation article further includes a lining sheet including a first sheet material at least wrapping a portion of the flavor-generating segment and a portion of the cooling segment and a second sheet material disposed outside the first sheet material and at least wrapping the entire filter segment and a portion of the cooling segment, and wherein at least two of the protrusions are provided in such a manner as to come into contact with the second sheet material when the non-combustion-heating-type flavor inhalation article is inserted so as to reach a bottom surface that is the deepest portion of the cavity (Claim 2).
Copending Application No. 18/478,901 does not explicitly claim that the cooling segment and filter segment are arranged downstream of the flavor generating segment, or that the second sheet is downstream of the first sheet. Or that the first sheet wraps the entire of the flavor generating segment.
LORD et al. discloses a non-combustion-heating-type flavor inhaler article (Abstract; Page 1, lines 1-5; Page 2, lines 1-25; Page 8, lines 10-20). The article comprising a flavor-generating segment, 2, that includes an aerosol-source material (Page 9, lines 20-29; Page 6, lines 3-30; Page7, lines 1-30; Figures 1-4) that includes a flavor-generating-segment filler (Page 8, lines 10-20). The device further includes a mouthpiece segment, 5, through which the components of the aerosol are inhaled (including the flavors) (Page 10, lines 5-30; Page 11, lines 1-20); a lining sheet, 3 and 7, that wraps all of the flavor-generating segment and the entire mouthpiece segment circumferences (Page 10, lines 10-30; Figures 1-3). The mouthpiece segment (e.g., area circumscribed by item 7, as seen in figures 1-3) includes a cooling segment (containing items 13b; Page 11, lines 1—20) and a filter segment (occupied by item 5) arranged on a downstream side of the flavor-generating segment in an airflow direction.
[AltContent: ][AltContent: arrow][AltContent: textbox (Flavor-generating segment)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Cooling segment of mouthpiece segment)][AltContent: textbox (Downstream direction )]
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LORD et al. further discloses that the lining sheet is formed of two sheets, 3 and 7 (Page 10, lines 10-30; Figures 1-3), with the second sheet arranged downstream and on an outer side of the first sheet.
[AltContent: textbox (First sheet, 3, upstream and under second sheet, 7)][AltContent: arrow][AltContent: textbox (Second sheet, 7, downstream an on outer surface of first sheet, 3)][AltContent: arrow][AltContent: textbox (Downstream direction )][AltContent: arrow]
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[AltContent: textbox (Entire length of filter segment, 5 wrapped by second sheet, 7)]The first sheet wraps the entire length of the flavor-generating segment and a part of the length of the cooling segment. The second sheet wraps the entire length of the filter segment and part of the cooling segment
[AltContent: ][AltContent: textbox (Portion of cooling segment overlap with first sheet, 3. The portion of the device covered by the second sheet represents the mouthpiece segment, and the upstream portion having 13a and 13b, represents the cooling segment)][AltContent: ][AltContent: textbox (Entire length of flavor-generating segment wrapped )][AltContent: ]
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It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the cooling segment and filter segment are arranged downstream of the flavor generating segment, or that the second sheet is downstream of the first sheet. Or that the first sheet wraps the entire of the flavor generating segment so that these parts are arranged in an appropriate manner to form a standard smoking article for use in an inhaler device.
With respect to claim 2, copending Application No. 18/478,901 claims wherein the flavor-generating-segment filler comprises at least one selected from tobacco leaves, shredded tobacco, a tobacco sheet, tobacco granules, a nicotine-carrying ion-exchange resin, and a tobacco extract (Claim 4).
With respect to claim 3, copending Application No. 18/478,901 claims wherein the flavor-generating-segment filler comprises a tobacco sheet, and the tobacco sheet is inserted in a gathered manner after being crimped (Claim 4).
With respect to claim 4¸ copending Application No. 18/478,901 claims wherein a filling density of the flavor-generating-segment filler in the flavor-generating segment is greater than or equal to 0.2 g/cm3 and less than or equal to 0.7 g/cm3 (Claim 6).
With respect to claim 5, copending Application No. 18/478,901 claims wherein the mouthpiece segment further includes a filter segment, and the filter segment includes a filter element and wrapping paper wrapping the filter element, the wrapping paper having a thickness of 40 μm to 100 μm, and a basis weight of 23 gsm to 90 gsm (Claim 7).
With respect to claim 7, copending Application No. 18/478,901 claims wherein the non-combustion-heating-type flavor inhalation article further includes an end segment and a support segment, and the end segment, the support segment, and the filter segment contain cellulose acetate fibers (Claim 8).
With respect to claim 8, copending Application No. 18/478,901 claims wherein the end segment, the support segment, and the filter segment are each a solidified member containing cellulose acetate fibers and a plasticizer (Claim 9).
With respect to claim 9, copending Application No. 18/478,901 claims a non-combustion-heating-type flavor inhalation product comprising: an electrical heating type device comprising an inductor for electromagnetic induction heating; and a non-combustion-heating-type flavor inhalation article used together with the electrical heating type device, wherein the electrical heating type device comprises an inductor for electromagnetic induction heating, a power source that supplies operation power to the inductor, and a heating chamber into which the non-combustion-heating-type flavor inhalation article can be inserted via an insertion slot (Claim 1)
This is a provisional nonstatutory double patenting rejection.
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.
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Claim(s) 1, 2, 4, 5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over LORD et al. (WO 2020/089091 A1) in view of KUERSTEINER et al. (EP 3021698 B1), RASOULI et al. (US 2015/0114405) and AOUN (US 2019/0230988)
With respect to claim 1, LORD et al. discloses a non-combustion-heating-type flavor inhaler article (Abstract; Page 1, lines 1-5; Page 2, lines 1-25; Page 8, lines 10-20). The article comprising a flavor-generating segment, 2, that includes an aerosol-source material (Page 9, lines 20-29; Page 6, lines 3-30; Page7, lines 1-30; Figures 1-4) that includes a flavor-generating-segment filler (Page 8, lines 10-20). The device further includes a mouthpiece segment, 5, through which the components of the aerosol are inhaled (including the flavors) (Page 10, lines 5-30; Page 11, lines 1-20); a lining sheet, 3 and 7, that wraps all of the flavor-generating segment and the entire mouthpiece segment circumferences (Page 10, lines 10-30; Figures 1-3). The mouthpiece segment (e.g., area circumscribed by item 7, as seen in figures 1-3) includes a cooling segment (containing items 13b; Page 11, lines 1—20) and a filter segment (occupied by item 5) arranged on a downstream side of the flavor-generating segment in an airflow direction.
[AltContent: ][AltContent: arrow][AltContent: textbox (Flavor-generating segment)][AltContent: arrow][AltContent: arrow][AltContent: textbox (Cooling segment of mouthpiece segment)][AltContent: textbox (Downstream direction )]
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LORD et al. further discloses that the lining sheet is formed of two sheets, 3 and 7 (Page 10, lines 10-30; Figures 1-3), with the second sheet arranged downstream and on an outer side of the first sheet.
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[AltContent: textbox (Entire length of filter segment, 5 wrapped by second sheet, 7)]The first sheet wraps the entire length of the flavor-generating segment and a part of the length of the cooling segment. The second sheet wraps the entire length of the filter segment and part of the cooling segment
[AltContent: ][AltContent: textbox (Portion of cooling segment overlap with first sheet, 3. The portion of the device covered by the second sheet represents the mouthpiece segment, and the upstream portion having 13a and 13b, represents the cooling segment)][AltContent: ][AltContent: textbox (Entire length of flavor-generating segment wrapped )][AltContent: ]
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LORD et al. further discloses that the flavor inhalation article is configured to be placed within an electrical heating type device (Page 8, lines 15-30; Page 9, lines 1-15; Figure 4). Moreover, the inhalation article is capable of being pressed when placed into the device by a user’s fingers as it is being pressed.
LORD et al. does not explicitly disclose that the compression change measurement method is 70% or greater.
KUERSTEINER et al. discloses smoking article having a paper wrapper, tobacco rod and filter segment (Paragraphs [0001]-[0003]). The filter segment is designed to provide an improved sensor experience for consumers (Paragraph [0007]). This is done by providing a “hardness” of 90% or more (Paragraphs [0009]-[0012]) when measured by a DD60A densimeter manufactured by Borgwaldt GmbH, Germany (e.g., the same device being claimed), and equation hardness(%)= Dd/DS * 100 (Paragraph [0012]-[0019]). The tested segment is tested across the center of the segment (Paragraph [0081]; Figure 5) (e.g., airflow-direction central part)
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the mouthpiece segment of LORD et al. with a hardness of 90% or more as taught by KUERSTEINER et al. so as to improve the user sensory experience.
It is noted that the same testing device is used to measure the hardness in KUERSTEINER et al.. Moreover, the same formula is used to measure hardness in KUERSTEINER et al. as is used to measure compression change rate in the instant application. Thus, the “hardness” of KUERSTEINER et al. and “compression change rate” represent the same unit of measure.
It is further noted that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
In the instant case, performing testing on the article/apparatus using the device being claimed (e.g., DD60A) represent a manner of operating the device during testing to measure a property thereof. KUERSTEINER et al. discloses the same property (e.g., hardness) that overlaps in value with the claimed value using the same device for testing. Thus, the manner of testing does not differentiate the claimed invention from that of the prior art, unless it can be shown that a specific protocol necessarily leads to a significantly different result.
LORD et al. does not explicitly disclose that the compression change of the flavor-generating segment is 70% or greater. RASOULI et al. discloses a tobacco substrate (Abstract) for a smoking article. The tobacco rod has a hardness value measured by a DD60A densimeter made by Borgwaldt KC GmbH in Hamburg, Germany (Paragraph [0017]) using the same formula as claimed, and as KUERSTEINER et al.. The hardness of the tobacco rod (e.g., flavor-generating segment of LORD et al.) is about 75% (Paragraph [0019], [0034]). This allows substrates that have a reduced amount of tobacco compared to conventional articles while maintaining the hardness thereof (Paragraph [0009]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the flavor-generating segment of LORD et al. with a hardness of 75%, as taught by RASOULI et al., so that less flavor-generating material can be used.
It is noted that the same testing device is used to measure the hardness in RASOULI et al. Moreover, the same formula is used to measure hardness in RASOULI et al. as is used to measure compression change rate in the instant application. Thus, the “hardness” of KUERSTEINER et al. and “compression change rate” represent the same unit of measure.
It is further noted that "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP 2114, II.
In the instant case, performing testing on the article/apparatus using the device being claimed (e.g., DD60A) represent a manner of operating the device during testing to measure a property thereof. RASOULI et al. discloses the same property (e.g., hardness) that overlaps in value with the claimed value using the same device for testing. Thus, the manner of testing does not differentiate the claimed invention from that of the prior art, unless it can be shown that a specific protocol necessarily leads to a significantly different result.
LORD et al. does not explicitly disclose that the flavor-generating segment includes a susceptor for electromagnetic induction heating.
AOUN discloses an apparatus for heating smokable material (Abstract). Within the smokable material, 30, (Paragraphs [0053]-[0056]; Figures 1 and 2) (e.g., flavor-generating segment of LORD et al.) is placed a plate of susceptor material (Paragraphs [0064], [0065], [0068]) and is heated by electromagnetic induction heating (Paragraph [0047] and [0048]) so as to cause progressive heating of the element and smokable material (Abstract). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a plate of susceptor material within the flavor-generating segment of LORD et al., as taught by AOUN so that when placed into the heating chamber of a heating device, the heating thereof can progress progressively.
With respect to claim 2, LORD et al. discloses that the flavor-generating material filler comprises tobacco leaves (Page 6, lines 10-31).
With respect to claim 4, KUERSTEINER et al. discloses that the tobacco packing density (e.g. filling density) that provides the disclosed hardness is between 200 mg/cm3 and 240 mg/cm3 (e.g., .2 and .24 g/cm3) (Paragraph [0056]).
With respect to claim 5, LORD et al. discloses that the mouthpiece segment comprises a filter segment, 5, (Figures 1-4) which comprises wrapping paper, 7, wrapping the filter segment (Page 10, lines 15-30). KUERSTEINER et al. discloses that the tipping paper that provides the desired hardness has a thickness of between 30 and 70 microns (Paragraph [0047]) and has a basis weight of between 50 and 100 gsm (Paragraph [0062]).
With respect to claim 9, LORD et al. discloses a non-combustion-heating type flavor inhalation product comprising the article of claim 1 (see rejection of claim 1). And an electrical type heating device (Page 11, lines 5-25). LORD et al. does not explicitly disclose the induction type heater claimed.
AOUN discloses that the heater comprises an inductor for electromagnetic induction heating (Paragraphs [0047], [0048]), such as including a coil, 114 (Paragraph [0077]-[0079]); a power source, 113, for supplying operation power to the inductor (Paragraphs [0077]-[0080]); a control unit, 117, for controlling the inductor (Paragraph [0088]); and a heating chamber, 111, into which the flavor inhaling article is placed (Paragraph [0085]; Figure 6), though an opening covered by the cover, 120 (Paragraph [0074]), which is shaped to accommodate the article (Paragraph [0076]). As seen in instant figure 3 and instant published paragraph [0065], the slot in this instance is a cylindrical chamber. Thus, the opening to the cylindrical chamber of AOUN meets Applicants interpretation of a slot. No further defining features of the claimed “slot” are provided in the instant disclosure of the invention.
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Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over LORD et al. (WO 2020/089091 A1) in view of KUERSTEINER et al. (EP 3021698 B1), RASOULI et al. (US 2015/0114405) and AOUN (US 2019/0230988) as applied to claims 1, 2, 4, 5 and 9 above, and further in view of ZUBER et al. (US 2014/0305448).
With respect to claim 2, modified LORD et al. does not explicitly disclose that the filler comprises a tobacco sheet that is gathered after being crimped.
ZUBER et al. discloses an aerosol-generating article (Abstract; title). The aerosol-forming substrate itself comprises a gathered sheet of crimped tobacco (Paragraph [0066], [0068], [0117]), which significantly reduces the risk of loose ends (paragraph [0056]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the tobacco of modified LORD et al. as a gathered sheet of crimped tobacco, as taught by ZUBER et al. so as to significantly reduce the likelihood of loose ends.
The step of “is inserted” is a manner of is a recitation as to the manner of making the article. The courts have generally held that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113, I. Thus, the manner of inserting the sheet does not impart patentability to the claim. The final product comprises a gathered, crimped sheet of tobacco as the flavor-generating segment filler, which ZUBER et al. teaches.
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Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over LORD et al. (WO 2020/089091 A1) in view of KUERSTEINER et al. (EP 3021698 B1), RASOULI et al. (US 2015/0114405) and AOUN (US 2019/0230988) as applied to claims 1, 2, 4, 5 and 9 above, and further in view of SUTTON (US 2012/0085359) and FOURNIER et al. (US 2005/0133048)
With respect to claims 7 and 8, modified LORD et al. discloses an end segment, 4, that is a filter segment (LORD et al.; Page 10, lines 15-20), but does not explicitly disclose the claimed support segment. SUTTON discloses a smoking article (Abstract). The filter itself comprises two separate plugs of filter material and the middle plug can be filled with a smoke modification material (Paragraph [0044]) (e.g., a support segment). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide another filter segment in the filter segment of modified LORD et al., as taught by SUTTON so that a smoke modification material can be supported therein.
The three filter plugs of modified LORD et al. represent the claimed end segment, support segment and filter segment, as claimed.
While SUTTON discloses that the filter materials are made of tow (Paragraph [0030]), not all tows are necessarily formed of fibers, per se.
FOURNIER et al. discloses smoking articles and filters (Abstract; Title). Filters contain cellulose acetate tows in the form of cellulose acetate fibers that are bound together with plasticizer, which acts as a hardening agent (Paragraph [0068]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide cellulose acetate fibers for each of the filters of modified LORD et al., as taught by FOURNIER et al., and harden them in a plasticizer (as required by Claim 8), so that the fibers remain in place during use. Specifically, as the user bites onto the filters in the mouthpiece, displacement of the fibers does not occur.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX B EFTA whose telephone number is (313)446-6548. The examiner can normally be reached 8AM-5PM EST M-F.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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