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 1-16 are pending and are subject to this Office Action.
Claims 1, 3-9, and 16 are withdrawn.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 7/13/2026 containing
remarks to the claims.
Response to Arguments
Applicant's arguments filed 7/13/2026 have been fully considered but they are not persuasive.
On pages 7-8 the Applicant argues that if a reference can be practiced without achieving the claimed functional property, that property is not inherent. The Applicant submits that a person of ordinary skill in the art practicing Grishchenko at its lower disclosed density boundaries would be incapable of maintaining a 15-30 N longitudinal compressive load, and thus as it is not necessarily produced across the entire range of Grishchenko’s broad density disclosure then the functional limitations cannot be considered inherent.
The Examiner does not find this to be persuasive. It appears the Applicant is relying on MPEP §2112.IV which states “the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic, where the Federal Circuit reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art”. This section is not about overlapping ranges of a characteristic but rather optimization of conditions to arrive at the characteristic. The characteristic of the paper filter having a maximum compressive load as claimed is present in the prior art (emphasis added). Grishchenko teaches the filter may have a basis weight within the range of 15 to 80 gsm (para. [0083]) and a density of about 0.19g/cm3 (para. [0075]). The instant specification teaches the hardness of the paper filter in the longitudinal direction is adjusted by appropriately setting the basis weight of the raw material sheet and/or the density of the filter element (see [0020] of the instant specification), and further teaches that the basis weight of the raw material sheet is generally greater than or equal to 40 gsm (see [0029] of the instant specification) and the density of the filter element is generally greater than or equal to 0.16 g/cm3 (see [0032] of the instant specification). Given that Grishchenko teaches a compositionally equivalent paper filter having density and basis weight that overlap the ranges disclosed by the Applicant that results in the claimed maximum compressive load, it follows that the paper filter of Grishchenko having densities and basis weights that overlap the disclosed ranges would have maximum compressive load that satisfies the claimed range.
On page 8 the Applicant argues that density alone does not dictate structural column strength and because Grishchenko completely fails to disclose or suggest the specific combination of base paper characteristics, fiber orientation, and structural configuration required to resist a 15-30 N longitudinal load, the Examiner has not established a prima facie case of unpatentability.
The Examiner does not find this to be persuasive. The instant specification explicitly states “Preferably, the hardness of the paper filter in the longitudinal direction is adjusted by appropriately setting the basis weight of the raw material sheet and/or the density of the filter element. As described in EXAMPLES below, the hardness of the paper filter in the longitudinal direction is correlated with the density of the filter element. Therefore, by selecting the density of the filter element, the hardness of the paper filter in the longitudinal direction can be easily and favorably adjusted within the range described above”. See para [0020]. Further, the instant specification states that the basis weight of the raw material sheet is generally greater than or equal to 40 gsm (see [0029] of the instant specification) and the density of the filter element is generally greater than or equal to 0.16 g/cm3 (see [0032] of the instant specification). Therefore as Grishchenko teaches the filter may have a basis weight within the range of 15 to 80 gsm (para. [0083]) and a density of about 0.19g/cm3 (para. [0075]), the paper filter described by Grishchenko is substantially identical to that of the claims, having both structural and compositional equivalence, and would have a maximum compressive load at least overlapping the claimed range. Therefore, the claimed paper filter is inherently present in the prior art either within the claimed range or overlapping the claimed range.
On pages 8-9 the Applicant argues that Grischenko teaches away from the claimed invention as the claim requires a draw resistance range of 0.2 to 1.0mm H20/mm whereas Grishchenko requires that its pressure drop be at least 1.0 mm H2O/mm.
The Examiner does not find this to be persuasive. The range taught by the prior art overlaps the claimed range, specifically at 1.0 mm H20/mm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable.
On page 9 the Applicant argues since the interaction between paper density, crimp geometry, and structural load resistance is interdependent, a person of ordinary skill in the art could not predictably optimize Grishchenko’s broad density range to arrive at the claimed 15-30 N compressive load profile.
The Examiner does not find this to be persuasive. One of ordinary skill in the art is not required to optimize the paper density, crimp geometry, and structural load resistance to arrive at the claimed 15-30 N compressive load profile. The prior art teaches the paper filter having a basis weight within the range of 15 to 80 gsm (para. [0083]) and a density of about 0.19g/cm3 (para. [0075]). It would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art, and the paper filter within the basis weight range taught by the prior art and with the density taught by the prior art would have a maximum compressive load at least overlapping the claimed range. Given that Grishchenko teaches a compositionally equivalent paper filter having density and basis weight that overlap the ranges disclosed by the Applicant that results in the claimed maximum compressive load, it follows that the paper filter of Grishchenko having densities and basis weights that overlap the disclosed ranges would have maximum compressive load that satisfies the claimed range.
On page 9 the Applicant argues because Grishchenko teaches away from the claimed draw resistance range as mentioned above, a prima facie case of obviousness has not been made.
The Examiner does not find this to be persuasive because Grishchenko does not teach away from the claimed range but in fact teaches a range overlapping the claimed range. Therefore, a prima facie case of obviousness exists.
The following is the maintained 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.
Claim(s) 2 and 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grishchenko (US2024/0156155).
Regarding claim 2, Grishchenko teaches:
A paper filter for flavor inhalation products (body of material 6 for article 1, and the material may be paper [0076]-[0077]), the paper filter comprising:
a rod-shaped filter element (body of material 6, [0087], figures 1-2); and a wrapping paper with which to wrap the filter element (first plug wrap 7, [0087]), wherein the filter element includes a corrugated paper sheet with alternate ridges and grooves extending continuously in a longitudinal direction (sheet material which is crimped, [0071], figures 2A-2B).
a draw resistance of the paper filter in an airflow direction is at least 1mm H20/mm ([0124]). The range taught by the prior art overlaps the claimed range of greater than or equal to 0.2 mm H2O/mm and less than or equal to 1.0 mm H2O/mm and is therefore prima facie obvious.
Grishchenko does not appear to disclose where a maximum compressive load measured while the paper filter is being compressed in the longitudinal direction at a compression velocity of 20 mm/min is greater than or equal to 15 N and less than or equal to 30 N.
However, the Applicant teaches that the hardness of the paper filter in the longitudinal direction refers to the maximum compressive load (see [0021] of the instant specification) and that the hardness of the paper filter in the longitudinal direction is adjusted by appropriately setting the basis weight of the raw material sheet and/or the density of the filter element (see [0020] of the instant specification), and further teaches that the basis weight of the raw material sheet is generally greater than or equal to 40 gsm (see [0029] of the instant specification) and the density of the filter element is generally greater than or equal to 0.16 g/cm3 (see [0032] of the instant specification).
When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See MPEP § 2112.01, I.
Therefore, as Grishchenko teaches that the materials of the filter are paper and comprises wood pulp ([0070]), the materials of the paper filter would be similar to the Applicant’s which describes using wood pulp (see [0027] of the instant specification). Grishchenko further teaches the filter element has structural equivalence with a basis weight of 15 to 80 gsm ([0083]) and a density of about 0.19g/cm3 ([0075]). Therefore as Grishchenko teaches a paper filter that is substantially identical to that of the claims, having both structural and compositional equivalence, it would be obvious to one of ordinary skill in the art that the paper filter would have a compressive load of the claimed range or overlapping the claimed range.
Regarding claim 10, Grishchenko teaches wherein a difference between a maximum height of the ridges and a maximum depth of the grooves is less than 500 um ([0072]: crimp amplitude).
The range taught by the prior art overlaps the claimed range of greater than or equal to 50 µm and less than or equal to 500 µm and is therefore prima facie obvious.
Regarding claim 11, Grishchenko teaches:
wherein the corrugated paper sheet is a creped sheet of a raw material sheet ([0071]: sheet material which is crimped) which has a basis weight of 15 to 80 gsm ([0083]). The range taught by the prior art overlaps the claimed range of greater than or equal to 40 gsm and less than or equal to 120 gsm and is therefore prima facie obvious.
a thickness of between 50 and 100 um ([0081]) which falls within the claimed range of greater than or equal to 30 µm and less than or equal to 130 µm.
and a width in the range of 120 mm to 200 mm ([0080]) which falls within the claimed range of greater than or equal to 70 mm and less than or equal to 200 mm.
and the width is a length in a direction perpendicular to a direction corresponding to a longitudinal direction of the filter element including the corrugated paper sheet produced from the raw material sheet (as the sheet material is gathered to form the body of material 6 ([0076]) and the width W1 of the body of material 6 corresponds to the diameter ([0112], figure 2A).
Regarding claim 12, Grishchenko teaches wherein a density of the filter element is about 0.19g/cm3 ([0075]: 0.19 mg/mm3). The range taught by the prior art falls within the claimed range of greater than or equal to 0.16 g/cm3 and less than or equal to 0.34 g/cm3.
Regarding claim 13, Grishchenko teaches:
wherein the wrapping paper has a basis weight of less than 50 gsm ([0100], basis weight of first plug wrap 7). The range taught by the prior art overlaps the claimed range of greater than or equal to 30 gsm and less than or equal to 100 gsm and is therefore prima facie obvious.
and a thickness of between 30 um and 60 um ([0102]) which falls within the claimed range of greater than or equal to 30 µm and less than or equal to 130 µm.
Regarding claim 14, Grishchenko teaches a filter segment for flavor inhalation products (component of the mouthpiece that includes a component including a body of material 6, [0067], figure 1), the filter segment comprising the paper filter for flavor inhalation products according to claim 2 (body of material 6, [0067], figure 1).
Regarding claim 15, Grishchenko teaches a rod-shaped flavor inhalation product (inhaler 1) comprising: a tobacco rod portion (rod of aerosol generating material 3); and a mouthpiece portion (mouthpiece 2), wherein the mouthpiece portion includes the paper filter for flavor inhalation products according to claim 2 (body of material 6, figure 1, [0065]-[0067]).
Conclusion
THIS ACTION IS MADE FINAL. 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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571) 270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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