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 Claims
Claims 1-3, 5, and 7-13 are pending. Claims 4 and 6 are cancelled. Claim 1 is currently amended.
Response to Arguments
Applicant’s arguments, see Remarks pg 4-6, filed 03/27/2026, with respect to the rejection(s) of claim(s) 1-13 under 35 USC 102 been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Binassi et al. (US 2015/0189913 A1) as modified Kitaoka et al. (WO 2018/101201 A1) (English Machine Translation relied upon), previously used in 35 USC 103 rejections for some of the claims.
Applicant argues that Kitaoka doesn’t disclose any of the claimed liquids for enhancing the filtration of the filter element. Kitaoka was cited as teaching a first liquid, polyethylene with a molecular weight in the same ranges as disclosed in Binassi, for selective filtration enhancement of the filter. Kitaoka also teaches other alternative liquids for filtration enhancement, including diglycerin a liquid claimed by applicants. It would be obvious to one of ordinary skill in the art to substitute an alternative liquid for enhancing the filtration of the filter element, where one of ordinary skill in the art would reasonably expect that the liquid additives would perform adequately because of the overlapping species of liquid on each list.
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.
Claim(s) 1-3, 5, and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Binassi et al. (US 2015/0189913 A1) in view Kitaoka et al. (WO 2018/101201 A1) (English Machine Translation relied upon).
Regarding claim 1, Binassi discloses:
A filter for a flavor inhalation article, ([0001]), the filter comprising: a filter element containing a biodegradable material, ([0007] regenerated cellulose, [0026] silk, cotton, linen, and wool); and a plug wrap paper wrapped around the filter element, ([0005] disclosing a wrapper circumscribing the segment of filtration material, ([0027] disclosing a preferred embodiment where the plug wrap may be dissolvable, [0028] disclosing if the preferred embodiment of a dissolvable plug wrap is chosen, the plug wrap may be a biodegradable plug wrap, [0029] further disclosing that if a preferred embodiment of a biodegradable plug wrap is chosen, the plug wrap comprises or consists of a polymeric film including at least one water soluble polymer, [0032] polymeric films which may include polyvinyl alcohol, cellophane, starch, hydroxyproplymethyl cellulose, carboxymethyl cellulose, and combinations thereof), wherein the filter element contains a liquid having the ability to filter out phenols, ([0010] low molecular weight polyether, added to increase the ability of the filter to selectively retain phenols during smoking of the article, such as polyethylene glycol having a molecular weight between 200 and 3600), and wherein a surface of the plug wrap paper that is in contact with the filter element is formed of a layer repellent to the liquid, ([0042] Fig 2 ref 18, the embodiment where the plug wrap comprises or consists of polyvinyl alcohol is inherently repellent to the liquid diglycerin).
Binassi does not disclose the liquid is at least one selected from the group consisting of polypropylene glycol, polypropylene glycol glyceryl ether, polybutylene glycol, diglycerin, sorbitan fatty acid esters, glycerin fatty acid esters, polyglycerin fatty acid esters, propylene glycol fatty acid esters, and caprylyl glycol.
Kitaoka teaches filtered cigarettes, ([0001]), and is thus considered to be within the inventor’s field of endeavor. Kitaoka teaches a filtered cigarette having a tobacco rod portion, a filter portion, a filter paper for wrapping the outer surface of the filter portion, and adding a liquid polyol having a cutting affinity of 22.0 or less, such as diglycerin to the filter section, ([0009]), further teaching that a liquid polyol with an affinity for smoking of 22.0 or less, selectively removes certain components contained in smoke such as phenols, ([0015]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Binassi with the teachings of Kitaoka, and substituted diglycerin for the low molecular weight polyether as the liquid having the ability to filter out phenols, MPEP 2143 I. Examples of Rationales (B) Simple substitution of one known element for another to obtain predictable results. Binassi discloses the claimed invention except for the substitution of a polyether with a monoether diglycerin. Kitaoka teaches diglycerin as a liquid additive polyol for the selective removal of phenols. One of ordinary skill in the art could have reasonably substituted diglycerin for a low molecular weight polyether, and the result would have been predictable, where the diglycerin would have predictably functioned to remove phenols similarly to the low molecular weight polyether.
Regarding claim 2, modified Binassi discloses the filter according to claim 1. Neither Binassi nor Kitaoka disclose the spreading area of the liquid on the layer repellent to the liquid.
Applicants have required a functional limitation that the spreading area of the liquid on the layer repellent to the liquid to be 35 mm2 or less. This functional limitation was not found in the prior art. Inherently, the combination of any liquid must have some spreading area on a chosen layer. Applicants provide a procedure for determining whether the spreading area limitation is met, Specification ([0068]-[0069]). The Examiner and the USPTO lacks the capacity to test the available layers to determine whether this functional requirement is met. However, the rejection above renders obvious the use of the liquid diglycerin having the ability to filter out phenols, and a layer repellent repellant to the liquid having at least a surface formed of polyvinyl alcohol. Applicant’s have provided a table of results indicating the spreading area of certain combinations of liquids and layers repellent to the liquids, which include diglycerin and polyvinyl alcohol, ([0071] table 1). Applicant’s experiments and tabulated results indicates that this combination has a spreading area of 18 mm2 with a confidence interval of 5, reasonably suggesting that the spreading area limitation is inherently met by the obvious combination.
Regarding claim 3, modified Binassi discloses:
The filter according to claim 1, wherein the plug wrap paper is composed of a substrate and the layer repellent to the liquid, ([0029], [0032] the plug wrap may consist or comprise polyvinyl alcohol), the layer being formed on a surface of the substrate that is in contact with the filter element, ([0042] Fig 2 ref 18, the embodiment where the plug wrap comprises or consists of polyvinyl alcohol is inherently repellent to the liquid diglycerin).
Regarding claim 5, modified Binassi discloses:
The filter according to claim 1, wherein the liquid is at least one selected from the group consisting of polypropylene glycol, polypropylene glycol glyceryl ether, polybutylene glycol, diglycerin, (the substitution of diglycerin for polyethylene glycol was rendered obvious in the rejection of claim 2 above) sorbitan fatty acid esters, glycerin fatty acid esters, polyglycerin fatty acid esters, propylene glycol fatty acid esters, polyethylene glycol, and caprylyl glycol.
Regarding claim 8, modified Binassi discloses:
The filter according to claim 1, wherein the layer repellent to the liquid is composed of paper repellent to the liquid, (([0005] disclosing a wrapper circumscribing the segment of filtration material, [0029], the plugwrap may comprise a sheet of polymeric film, [0032] the plug wrap may comprise polyvinyl alcohol, reasonably disclosing a plug wrap with a film coating of polyvinyl alcohol), the layer being formed on a surface of the substrate that is in contact with the filter element, ([0042] Fig 2 ref 18, the embodiment where the plug wrap comprises or consists of polyvinyl alcohol is inherently repellent to the liquid diglycerin).
Regarding claim 9, modified Binassi discloses:
A flavor inhalation article comprising: a tobacco rod wrapped with a wrapping paper; the filter according to claim 1 (see the rejection of claim 1 above); and a tipping paper that connects the tobacco rod and the filter together, ([0042 the wrapped tobacco rod and the filter are joined by a band of tipping paper Fig 2 ref 20).
Regarding claim 10, modified Binassi discloses:
The flavor inhalation article according to claim 9, (see the rejection of claim 9 above) wherein at least one of the tipping paper or the plug wrap paper includes a colored portion. Binassi does not disclose that the tipping paper or the plug wrap paper includes a colored portion.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have provided a colored portion on at least one of the tipping paper (which joins the tobacco portion and the filter portion) or the plug wrap paper (which circumscribed the tobacco portion).
Providing a colored portion on either of these papers is considered an aesthetic design change which has been found to be obvious under legal precedent, MPEP 2144.04 Legal Precedent as Source of Supporting Rational, I. Aesthetic Design Change. One of ordinary skill in the art would have found it advantageous to provide this aesthetic design change to clearly delineate the tobacco rod portion from the filter portion for the consumer, visually indicating where the article should be held and lit, as well as providing opportunities for branding with logos or specific colorations that indicate the specific source of the smoking articles (trademark/trade-dress).
Regarding claim 11, modified Binassi discloses:
the flavor inhalation article according to claim 9, (see the rejection of claim 9 above), wherein the flavor inhalation article is wrapped directly with an inner wrapper, and wherein a layer repellent to the liquid having the ability to filter out phenols is disposed at least in a portion of the inner wrapper that is in contact with the filter of the flavor inhalation article, (see also the rejection of claim 8 above).
Binassi does not disclose that the smoking articles according to claim 9 are provided in a group within a package.
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified the invention of Binassi, to group a number of smoking articles together and provide them within a package to sell to a consumer. Packs of cigarettes (smoking articles contained in package) are notoriously well known in the art, and have been provided as a convenient way to sell smoking articles in groups, as an alternative to selling the smoking articles singly. One of ordinary skill in the art would have recognized the convenience of providing cigarettes in packs, given the typical smoking habits of smokers (regularly consuming several individual cigarettes in a day), and believed that providing the cigarettes in packs would promote consumption and further sales of the smoking articles, as well as providing a convenient way for consumers to contain their smoking articles before smoking, and provide an opportunity to further advertise and brand their smoking articles on the smoking article packaging.
Regarding claim 12, modified Binassi discloses the flavor inhalation article package according to claim 11 above. Binassi discloses the layer repellent to the liquid and included in the inner wrapper contains at least one selected from the group consisting of starch, cellulose nanofibers, ethyl cellulose, nitrocellulose, gum arabic, aluminum, paraffin, polyethylene, polypropylene, polyvinyl alcohol, (([0005] disclosing a wrapper circumscribing the segment of filtration material, [0029], the plugwrap may comprise a sheet of polymeric film, [0032] the plug wrap may comprise polyvinyl alcohol, reasonably disclosing a plug wrap with a film coating of polyvinyl alcohol), the layer being formed on a surface of the substrate that is in contact with the filter element, ([0042] Fig 2 ref 18, the embodiment where the plug wrap comprises or consists of polyvinyl alcohol is inherently repellent to the liquid diglycerin), fluorocarbon resins, acrylic resins, and silicones.
Claim(s) 7 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Binassi et al. (US 2015/0189913 A1) and in view of Kitaoka et al. (WO 2018/101201 A1) (English Machine Translation relied upon), as applied to claim 1 above, and further in view of Alvarez De La Candena et al. (US 2020/0221761 A1)(Alvarez).
Regarding claims 7 and 13, modified Binassi discloses the filter according to claim 2, (necessarily including the filter according to claim 1) and the flavor inhalation article package according to claim 11. Binassi does not disclose that the layer repellent to the liquid contains at least one selected from the group consisting of ethyl cellulose, acrylic resins, paraffin, polyethylene, polypropylene, fluorocarbon resins, and silicones.
Alvarez teaches a smoking article with a frangible capsule, ([0001]), and is thus within the inventor’s field of endeavor. Alvarez teaches that it is known to incorporate additives, such as flavorants, into a crushable capsule, located within a smoking article, to allow a consumer to modify their smoking experience, ([0004]). Alvarez teaches that the prior art discloses the capsules may be included in a segment of the fibrous filter material, ([0005]). Alvarez teaches that a wrapper circumscribing a segment comprising a capsule should be an impermeable wrapper, to prevent the liquid payload of the capsule from seeping through to the exterior surface, ([0032]), and that the impermeable wrapper may comprise a substrate, such as paper, that is coated with a coating impermeable to the liquid, further suggesting two coatings, nitrocellulose and ethyl-cellulose which would be suitable to make the paper wrapper impermeable to the liquid contained in the capsule, ([0032]).
It would be obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have further modified Binassi according to the teachings of Alvarez, to have substituted the wrapper of Binassi comprising polyvinyl alcohol for the paper wrapper of Alvarez comprising a coating of nitrocellulose or ethyl-cellulose, MPEP 2143 I. Examples of Rationales (B) Simple substitution of one known element for another to obtain predictable results. Binassi discloses the claimed invention except for the substitution of a wrapper comprising polyvinyl alcohol with a wrapper comprising a coating of nitrocellulose or ethyl-cellulose, and a flavor capsule. Alvarez teaches the flavor capsule and a coating of nitrocellulose or ethyl-cellulose for a paper wrapper to ensure the liquid payload does not seep through the paper wrapper to the exterior of the smoking article. One of ordinary skill in the art could have modified the smoking article of Binassi to include a capsule to modify the smoking experience of a smoker, and reasonably substituted a paper wrapper with the coating of nitrocellulose or ethyl-cellulose to ensure it was impermeable to the liquid payload of the capsule, for wrapper comprising polyvinyl alcohol and the result would have been predictable – the wrapper with the coating of nitrocellulose or ethyl-cellulose would have predictably prevented the liquid diglycerin as well as the payload from the capsule from permeating the wrapper to the exterior of the smoking article.
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 DANIEL E VAKILI whose telephone number is (571)272-5171. The examiner can normally be reached Monday - Friday 7:30 am - 4:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.E.V./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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