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 the Claims
Claims 1-11 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restriction
Applicant’s election with traverse of Group I (claims 1-9) in the reply
filed on 04/03/2026 is acknowledged. The traversal is on the grounds that there would be no undue burden on the Examiner to examine both groups of claims because Group II is directed to a method for producing the coolant for a non-combustion-heating-type tobacco of Group I.
The Examiner respectfully disagrees with the Applicant’s arguments. The method of producing the coolant requires steps that are not disclosed in Group I and therefore would require additional search queries directed to spraying a solution, adding a solution dropwise, drying the granules and cause the base material to flow. All of which are limitations outside of the scope of Group I and would indeed be an undue search burden to examine.
Claims 10-11 are withdrawn as being directed to a non-elected invention.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 3 should read: “the porous granular base material”
Appropriate correction is required.
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)(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 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hu et al. (US-20210161203-A1).
In regards to claim 1, Hu, directed to a heat-not burn tobacco cigarette (i.e., non-combustion-type tobacco) ([0002] and [0005]) comprising a starch-based cooling material (i.e., coolant) ([0007]),
Wherein the coolant comprises a polyol, wherein the polyol is preferably propylene glycol and/or glycerol (i.e., polyhydric alcohol) ([0030]), which are both polyhydric alcohols and are examples provided in the Applicant’s instant specification of polyhydric alcohols ([0015])
And a starch, which is a known porous material in accordance with Applicant’s instant specification (i.e., porous granular base material) ([0007] and [0022]),
The granular base material being added with the polyhydric alcohol ([0011]-[0012]). In accordance with the Applicant’s specification, the term "impregnate" means that at least part of the polyhydric alcohol is held in pores formed in the porous granular base material, and a granular base material mixed with a polyhydric alcohol is considered to anticipate this feature.
In regards to claim 2, Hu discloses at least one embodiment wherein the weight of the polyhydric alcohol is from 3% to 39% by weight or less because Hu discloses the coolant comprises 0.6 parts out of 9.2 total parts the polyol (i.e., polyhydric alcohol) ([0078]). The resulting weight percent of the polyhydric alcohol is 6.52% which anticipates the claimed range of 3% to 39% by weight.
In regards to claim 3, Hu discloses the porous granular base material is a starch ([0007]).
Claim Rejections - 35 USC § 102/103
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(2) as anticipated by Chen et al. (US-20210204595-A1, as cited in the IDS dated 11/05/2025) or, in the alternative, under 35 U.S.C. 103 as obvious over Chen et al. (US-20210204595-A1, as cited in the IDS dated 11/05/2025) and further in view of Hu (US-20210161203-A1).
In regards to claim 1, Chen directed to a cooling filter comprising cooling particles (i.e., coolant) for a heat-not-burn cigarette (i.e., a non-combustion-heating-type tobacco) ([0004]), discloses:
The coolants cooling particles comprising a particle body (i.e., porous granular base material) comprising powders ([0013]), the entire coolant structure having a loose and porous structure ([0005]-[0006] and are granulated ([0020]-[0021]),
The porous granular base material is impregnated with a phase change material including polyethylene glycol ([0009]). In accordance with the Applicant’s instant specification, “the polyhydric alcohol is not limited and may be any alcohol having two or more hydroxyl groups” ([0015]), and therefore polyethylene glycol, as an alcohol having two hydroxyl groups, anticipates a polyhydric alcohol.
Alternatively, Chen does not explicitly disclose the coolant comprising a polyhydric alcohol which impregnates the granular base material.
Hu, directed to a similar heat-not burn tobacco cigarette (i.e., non-combustion-type tobacco) ([0002] and [0005]) comprising a starch-based cooling material (i.e., coolant) ([0007]), and the coolant comprising a polyol, wherein the polyol is preferably propylene glycol and/or glycerine (i.e., polyhydric alcohol) ([0030]), which are both polyhydric alcohols and are examples provided in the Applicant’s instant specification of polyhydric alcohols ([0015]).
Hu further discloses the coolant comprises a granular base material, a phase change material, and a polyhydric alcohol ([0039]).
Hu further teaches the granular base material being added with the polyhydric alcohol ([0011]-[0012]). In accordance with the Applicant’s specification, the term "impregnate" means that at least part of the polyhydric alcohol is held in pores formed in the porous granular base material, and a granular base material mixed with a polyhydric alcohol is considered to anticipate this feature.
Hu further discloses the addition of the polyol (i.e., polyhydric alcohol) softens the starch-based cooling material and improves fluidity ([0008]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Chen by adding a polyol to impregnate the granular base material as taught by Hu, because both are directed to coolants for cigarettes comprising starches and phase change materials, Hu teaches the addition of a polyhydric alcohol softens the starch-based cooling material and improves fluidity ([0008]), and this merely involves applying a known technique of using a polyhydric alcohol of a similar coolant to yield predictable results.
In regards to claim 2, Modified Chen discloses at least one embodiment wherein the weight of the polyhydric alcohol is from 3% to 39% by weight or less because Hu discloses the coolant comprises 0.6 parts out of 9.2 total parts the polyol (i.e., polyhydric alcohol) (Hu [0078]). The resulting weight percent of the polyhydric alcohol is 6.52%. The range disclosed by the prior art overlaps the claimed range of the weight of the polyhydric alcohol in the coolant being from 3 to 39% weight, and is therefore considered prima facie obvious.
In regards to claim 3, Chen discloses the coolants particle body can include an excipient such as cellulose ([0015]) and/or inorganic materials such as calcium carbonate ([0017]).
In regards to claim 4, Chen discloses the granular base material has a particle size and is porous ([0019]) but does not explicitly disclose a volume of pores included in the porous granular base material is from 0.3 mL/g to 0.8 mL/g.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the pore volume since it has been held that, where 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed pore volume is critical and has unexpected results. In the present invention, one would have been motivated to optimize the pore volume motivated by the desire to ensure the internal pores of the particles are not completely blocked so that the particles have certain adsorption performance (Chen [0021]).
Therefore, it would be obvious to one of ordinary skill in the art that Chen could be optimized to teach a pore volume of the granular base material from 0.3 to 0.8 g/mL because Chen discloses the same granular base materials and it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 II(B)).
In regards to claim 5, Chen discloses the cooling particles (i.e., coolant) have a diameter of 10-50 meshes, preferably 20-35 meshes, wherein 50 mesh is equivalent to 300 microns ([0019]). The range disclosed by the prior art overlaps the claimed range of the average particle size being from 212 to 600 microns, and is therefore considered prima facie obvious.
In regards to claim 6, Chen discloses the cooling particles (i.e., coolant) have a bulk density of 0.8 to 2.5 g/mL. The range disclosed by the prior art overlaps the claimed range of the coolant having a bulk density of 0.55 to 0.80 g/cm^3, and is therefore considered prima facie obvious.
In regards to claim 7, Chen discloses the cooling filter rod (which comprises the coolant) is arranged between two conventional filter rods to constitute a cigarette filter portion, and all high-temperature smoke needs to pass through the cooling filter rod before entering the mouth to ensure the cooling effect (i.e., cigarette filter portion forms mouthpiece portion) which can be used for heat-not-burn cigarettes ([0041]).
In regards to claim 8, Chen discloses the mouthpiece portion comprises a cooling filter rod (i.e., cooling a segment) which includes the coolant ([0005] and [0041]).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US-20210204595-A1, as cited in the IDS dated 11/05/2025) alternatively in view of Hu et al. (US-20210161203-A1) as applied to claim 1 above, and further in view of Hwang et al. (US-20210000180-A1).
In regards to claim 9, Chen discloses a heat-not-burn cigarette produces smoke by heating the tobacco product with an external heating element ([0002]), but does not explicitly disclose an electric heating tobacco product comprising an electric heating device including a heating member, a battery unit serving as a power source for the heater member, a control unit for controlling the heating member, and the non-combustion-heating-type tobacco being inserted in the electric heating device so as to come into contact with the heater member.
Hwang, directed to a cigarette and aerosol generating device for a cigarette (abstract) discloses the aerosol generating device (i.e., electric heating tobacco product) comprising a heater with an electrically conductive track (i.e., electric heating device) ([0044])-[0045]).
Hwang further discloses a battery that supplies power to the heater and a controller (i.e., control unit) for controlling the heating member that heats the cigarette (i.e., non-combustion-heating-type tobacco ([0040]-[0041]).
Hwang further discloses the non-combustion-heating-type tobacco is inserted into the electric device and comes into contact with the heater member ([0043] and [0048]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Chen by incorporating an electric heating tobacco product to heat the non-combustion-heating-type tobacco product, as taught by Hwang, because all are directed to non-combustion type tobacco products, Chen teaches the tobacco product ([0041]) and is merely silent to how the product is heated, Hwang makes obvious types of systems used by tobacco products for heating, and therefore it would be obvious to apply the tobacco product of Modified Chen to be heated by the electric device of Hwang to vaporize the tobacco components ([0048) and yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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