DETAILED ACTION
Response to Arguments
Applicant's arguments filed 7/1/2026 have been fully considered but they are not persuasive.
Applicant argues “Among the differences between Dubey and Applicant's claimed invention, Dubey does not disclose compression change and further discloses using different loading conditions, and compression duration…Dubey measures "hardness" according to a protocol that uses a 2 g preload, a 150 g measurement load, and determines hardness from the ratio of the compressed height to the original height after application of the defined load. In contrast, Applicant's amended claim 1 requires compression change measured by compressing the filter element at a load of 3 N/mm per unit length for 10 seconds and determining the ratio of the post-compression diameter to the original diameter. Although the Examiner asserts that the formulas "correspond approximately," no evidence has been provided that the two measurement methods are equivalent, or obvious variants, or that a filter satisfying Dubey's hardness test necessarily satisfies Applicant's compression-change test.”
The Examiner disagrees. Dubey does disclose compression change, as shown by the provided formula. Dubey referring to this compression change as “hardness” does not negate that the fact that this hardness is a compression change. Dubey’s h0 corresponds to the claimed D1, a height (diameter) measured after applying a compressive load. Dubey’s h1 corresponds to the claimed D2, a height (diameter) measured before the above compression. The ratio is multiplied by 100, providing a compression change %. In view of the compression change % of Dubey falling within the claimed compression change %, in combination with Dubey teaching all of the physical parameters of the claimed filter element, including fiber shape, filament denier, density, and airflow resistance, the filter of Dubey is interpreted to inherently have the claimed compression change. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Applicant argues “Among the differences between Bonici and Applicant's claimed invention, Bonici does not disclosure compression change and discloses determining radial harness using different loading conditions… Bonici measures "radial hardness" using a different testing protocol (2 kg load for 20 seconds). In contrast, Applicant's amended claim 1 requires compression change measured under a 3 N/mm load for 10 seconds. Bonici does not disclose compression change. Although the Examiner states that the formulas "correspond approximately," no evidence has been provided that the two measurements are equivalent, or obvious variants, or that Bonici's filters necessarily satisfy the claimed compression-change range.” The Examiner disagrees. Bonici does disclose compression change, as shown by the provided formula. Bonici referring to this compression change as “radial hardness” does not negate that the fact that this radial hardness is a compression change. Bonici’s Dd corresponds to the claimed D1, a diameter measured after applying a compressive load. Bonici’s Ds corresponds to the claimed D2, a diameter measured before the above compression. The ratio is multiplied by 100, providing a compression change %. In view of the compression change % of Bonici falling within the claimed compression change %, in combination with Bonici teaching all of the physical parameters of the claimed filter element, including fiber shape, filament denier, density, and airflow resistance, the filter of Bonici is interpreted to inherently have the claimed compression change. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2 and 5 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dubey (US 2022/0295872).
Regarding claim 1, Dubey [0047; Fig. 1] teaches a rod-shaped non-combustion-heating-type tobacco comprising a tobacco rod portion 3 and a mouthpiece portion 2, wherein the mouthpiece portion includes a filter segment including a filter element 4, the filter element being composed of a fiber, a cross section of the fiber taken in a circumferential direction being Y-shaped [0056], the fiber having a filament denier of 8 [0055]. Dubey teaches a length of the filter element 4 in a longitudinal direction is 7 mm [0049].
Dubey teaches the filter element has a hardness of 90-94% [Table 1.0]. The formula for determining hardness [0060-0065] corresponds approximately to the instant formula for determining compression change. Dubey teaches the filter element has all of the physical parameters of the claimed filter element, including fiber shape, filament denier, density, and airflow resistance. For the above reasons, the filter of Dubey is interpreted to inherently have the claimed compression change.
Regarding claim 2, Dubey teaches the filter has a density of 0.09 to 0.13 g/cm3 [0054].
Regarding claim 5, Dubey teaches a pressure drop (airflow resistance) of the filter segment in a longitudinal direction is 1.05 to 1.70 mmH20/mm [0052].
Claim Rejections - 35 USC § 103
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Bonici (US 2020/0329759).
Regarding claim 1, Bonici teaches an aerosol-generating article (rod-shaped non-combustion-heating-type tobacco) comprising a tobacco rod portion 20 and a mouthpiece portion 30, wherein the mouthpiece portion 30 includes a filter segment including a filter element 32 [Fig. 1; 0060, 0064], the filter element being composed of a fiber, a cross section of the fiber taken in a circumferential direction being Y-shaped, the fiber having a filament denier of 8 [0037, 0071 and Table 1: Samples 12, 13, 15].
Bonici teaches the filter has a length between 15 mm and 40 mm [0057]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). One of ordinary skill in the art would have found it obvious to use any filter length within the range disclosed by Bonici, such as a length of 15-20 mm, to achieve predictable results.
Bonici teaches the filter element has a radial hardness of 90% or greater [0021]. The formula for determining radial hardness [0016] corresponds approximately to the instant formula for determining compression change. Bonici further teaches the filter element has all of the physical parameters of the claimed filter element, including fiber shape, filament denier, density, and airflow resistance. For the above reasons, the filter of Bonici is interpreted to inherently have the claimed compression change.
Regarding claim 2, Bonici teaches the filter has a density of 0.12 g/cm3 [Table 2, sample 12].
Regarding claim 5, Bonici teaches an RTD (airflow resistance) of 206 mmWG (or mmH20) for a rod length of 126 mm [0072 and Table 2: Sample 12, 13, 15], which equals 1.6 mmH20/mm.
Regarding claim 6, Bonici teaches a flavoring agent capsule is disposed inside the filter element [0052].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Bonici as applied to claim 1 above, and further in view of Braunshteyn (US 2007/0074734).
Bonici teaches the non-combustion-heating-type tobacco is heated to form an aerosol [0060] but does not teach the claimed electric heating device. Braunshteyn teaches an electric heating device including a heater member [0026], a battery unit serving as a power source for the heater member [0025], and a control unit for controlling the heater member [0027]; and a smoking article 22 being inserted in the electric heating device so as to come into contact with the heater member 52 [0032; Fig. 3]. It would have been obvious to one of ordinary skill in the art to include this electric heating device with the article of Bonici for the purpose of forming an aerosol [Braunshteyn 0039] as desired by Bonici.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Dubey as applied to claim 1 above, and further in view of Braunshteyn.
Dubey teaches the non-combustion-heating-type tobacco is heated to form an aerosol [0021] but does not teach the claimed electric heating device. Braunshteyn teaches an electric heating device including a heater member [0026], a battery unit serving as a power source for the heater member [0025], and a control unit for controlling the heater member [0027]; and a smoking article 22 being inserted in the electric heating device so as to come into contact with the heater member 52 [0032; Fig. 3]. It would have been obvious to one of ordinary skill in the art to include this electric heating device with the article of Dubey for the purpose of forming an aerosol [Braunshteyn 0039] as desired by Dubey.
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 ERIC YAARY whose telephone number is (571)272-3273. The examiner can normally be reached M-F 9-5.
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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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/ERIC YAARY/Examiner, Art Unit 1755
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