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, 3-9, 12-18, 22, 26, 29-37, and 39-40 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims. Claims 2, 10-11, 19-21, 23-25, 27-28, and 38 are canceled. Claims 36-37 and 39-40 are withdrawn.
Election/Restrictions
Applicant’s election without traverse of Claims 1, 3-9, 12-18, 22, 26, 29-35 in the reply filed on 04/27/2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4, 5, 6, 7, 8, 9, 12, 13, 14, 17, 18, 29, 30, 34, and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “greater than about 0.4 mm”, and the claim also recites “greater than about 0.5 mm or greater than about 0.6 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “greater than about 0.5 mm or greater than about 0.6 mm” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “less than about 600 µm” and the claim also recites “less than about 500 µm or less than about 400 µm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “less than about 500 µm or less than about 400 µm” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation “between about 0.15 mg/mm3 and about 0.2 mg/mm3” and the claim also recites “between about 0.17 mg/mm3 and about 0.2 mg/mm3” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “between about 0.17 mg/mm3 and about 0.2 mg/mm3” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “at least 100 mm3” and the claim also recites “at least 115 mm3, at least 150 mm3, at least 200 mm3, at least 300 mm3, at least 400 mm3, at least 500 mm3, at least 600 mm3, at least 700 mm3, at least 800 mm3, at least 900 mm3, or at least 900 mm3” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “at least 115 mm3, at least 150 mm3, at least 200 mm3, at least 300 mm3, at least 400 mm3, at least 500 mm3, at least 600 mm3, at least 700 mm3, at least 800 mm3, at least 900 mm3, or at least 900 mm3”
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “at least 19 mm3” and the claim also recites “at least 25 mm3 or at least 30 mm3” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “at least 25 mm3 or at least 30 mm3” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation “at least 4 mg” and the claim also recites “at least 5 mg or at least 6 mg” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “at least 5 mg or at least 6 mg” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitations “at least 20 g/cm2” and the claim also recites “at least 22 g/cm2, or at least 24 g/cm2” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “at least 22 g/cm2, or at least 24 g/cm2” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 14 recites the broad recitations “120mm and 200mm” and the claim also recites “150mm and 200mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “150mm and 200mm” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitations “at least 1.0 mmH20” and the claim also recites “at least 1.2 mmH20 or at least 1.5 mmH20” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “at least 1.2 mmH20 or at least 1.5 mmH20” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitations “less than 3 mmH20” and the claim also recites “less than 2.8 mmH20 or less than 2.5 mmH20” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “at least 1.2 mmH20 or at least 1.5 mmH20” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 29 recites the broad recitations “at least 0.02 mg” and the claim also recites “at least 0.03 mg, 0.04 mg, or 0.05 mg” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “at least 0.03 mg, 0.04 mg, or 0.05 mg” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 30 recites the broad recitations “0.5 mg or less” and the claim also recites “0.45 mg or less, 0.4 mg or less, 0.35 mg or less, or 0.3 mg or less” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “0.45 mg or less, 0.4 mg or less, 0.35 mg or less, or 0.3 mg or less” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 34 recites the broad recitations “2 mm to 6 mm” and the claim also recites “2 mm to 5 mm, 2 mm to 4 mm, or 2 mm to 3 mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “2 mm to 5 mm, 2 mm to 4 mm, or 2 mm to 3 mm” will not be considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 35 recites the broad recitations “between about 50 and about 100 µm” and the claim also recites “between about 60 and about 90 µm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examining, the recitation of “between about 60 and about 90 µm” will not be considered.
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.
Claims 1, 3-9, 12-18, 22, 26, 29-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9, 12, 14-18, 22, 26, 29-35 of co-pending Application No. 18/550,552. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is rejected by claim 1 of co-pending Application No. 18/550,552
Claim 3 is rejected by claim 3 of co-pending Application No. 18/550,552
Claim 4 is rejected by claim 4 of co-pending Application No. 18/550,552
Claim 5 is rejected by claim 5 of co-pending Application No. 18/550,552
Claim 6 is rejected by claim 6 of co-pending Application No. 18/550,552
Claim 7 is rejected by claim 7 of co-pending Application No. 18/550,552
Claim 8 is rejected by claim 8 of co-pending Application No. 18/550,552
Claim 9 is rejected by claim 9 of co-pending Application No. 18/550,552
Claim 12 is rejected by claim 12 of co-pending Application No. 18/550,552
Claim 13 is rejected by claim 12 of co-pending Application No. 18/550,552
Claim 14 is rejected by claim 14 of co-pending Application No. 18/550,552
Claim 15 is rejected by claim 15 of co-pending Application No. 18/550,552
Claim 16 is rejected by claim 16 of co-pending Application No. 18/550,552
Claim 17 is rejected by claim 17 of co-pending Application No. 18/550,552
Claim 18 is rejected by claim 18 of co-pending Application No. 18/550,552
Claim 22 is rejected by claim 22 of co-pending Application No. 18/550,552
Claim 26 is rejected by claim 26 of co-pending Application No. 18/550,552
Claim 29 is rejected by claim 29 of co-pending Application No. 18/550,552
Claim 30 is rejected by claim 30 of co-pending Application No. 18/550,552
Claim 31 is rejected by claim 31 of co-pending Application No. 18/550,552
Claim 32 is rejected by claim 32 of co-pending Application No. 18/550,552
Claim 33 is rejected by claim 33 of co-pending Application No. 18/550,552
Claim 34 is rejected by claim 34 of co-pending Application No. 18/550,552
Claim 35 is rejected by claim 35 of co-pending Application No. 18/550,552
The co-pending claims and the rejected claims differ in that the co-pending Application No. 18/550,552 recites “an article for use in or as a combustible aerosol provision system” rather than “an article for use in or as a non-combustible aerosol provision system”. However, the determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction (MPEP 2111.02(II)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Claims 1, 3-9, 12-18, 22, 26, 29-32, and 34-35 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-18, 22, 26, 29-32, and 34-35 of co-pending Application No. 18/550,605. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is rejected by claims 1 and 2 of co-pending Application No. 18/718,555
Claim 3 is rejected by claims 1 and 3 of co-pending Application No. 18/718,555
Claim 4 is rejected by claim 4 of co-pending Application No. 18/718,555
Claim 5 is rejected by claim 5 of co-pending Application No. 18/718,555
Claim 6 is rejected by claim 6 of co-pending Application No. 18/718,555
Claim 7 is rejected by claim 7 of co-pending Application No. 18/718,555
Claim 8 is rejected by claim 8 of co-pending Application No. 18/718,555
Claim 9 is rejected by claim 9 of co-pending Application No. 18/718,555
Claim 12 is rejected by claim 12 of co-pending Application No. 18/718,555
Claim 13 is rejected by claim 13 of co-pending Application No. 18/718,555
Claim 14 is rejected by claim 14 of co-pending Application No. 18/718,555
Claim 15 is rejected by claim 15 of co-pending Application No. 18/718,555
Claim 16 is rejected by claim 16 of co-pending Application No. 18/718,555
Claim 17 is rejected by claim 17 of co-pending Application No. 18/718,555
Claim 18 is rejected by claim 18 of co-pending Application No. 18/718,555
Claim 22 is rejected by claim 22 of co-pending Application No. 18/718,555
Claim 26 is rejected by claim 26 of co-pending Application No. 18/718,555
Claim 29 is rejected by claim 29 of co-pending Application No. 18/718,555
Claim 30 is rejected by claim 30 of co-pending Application No. 18/718,555
Claim 31 is rejected by claim 39 of co-pending Application No. 18/718,555
Claim 32 is rejected by claim 39 of co-pending Application No. 18/718,555
Claim 34 is rejected by claim 34 of co-pending Application No. 18/718,555
Claim 35 is rejected by claim 35 of co-pending Application No. 18/718,555
The co-pending claims and the rejected claims differ in that the features of the rejected independent claim are in multiple claims of the co-pending application. However, it would have been obvious for one of ordinary skill in the art to combine features of the dependent claims to arrive at the instantly claimed application.
Further, the co-pending Application No. 18/718,555 recites “the article being for use in or as an aerosol provision system” rather than “an article for use in or as a non-combustible aerosol provision system”. However, the determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "‘extraneous’ limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction (MPEP 2111.02(II)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Claims 1, 3-9, 12-18, 22, 26, 29-32, and 34-35 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-9, 12, 14-18, 22, 26, 29-32, and 34-35 of co-pending Application No. 18/550,613. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is rejected by claims 1 and 2 of co-pending Application No. 18/550,613
Claim 3 is rejected by claims 1 and 3 of co-pending Application No. 18/550,613
Claim 4 is rejected by claim 4 of co-pending Application No. 18/550,613
Claim 5 is rejected by claim 5 of co-pending Application No. 18/550,613
Claim 6 is rejected by claim 6 of co-pending Application No. 18/550,613
Claim 7 is rejected by claim 7 of co-pending Application No. 18/550,613
Claim 8 is rejected by claim 8 of co-pending Application No. 18/550,613
Claim 9 is rejected by claim 9 of co-pending Application No. 18/550,613
Claim 12 is rejected by claim 12 of co-pending Application No. 18/550,613
Claim 13 is rejected by claim 137 of co-pending Application No. 18/550,613
Claim 14 is rejected by claim 14 of co-pending Application No. 18/550,613
Claim 15 is rejected by claim 15 of co-pending Application No. 18/550,613
Claim 16 is rejected by claim 16 of co-pending Application No. 18/550,613
Claim 17 is rejected by claim 17 of co-pending Application No. 18/550,613
Claim 18 is rejected by claim 18 of co-pending Application No. 18/550,613
Claim 22 is rejected by claim 22 of co-pending Application No. 18/550,613
Claim 26 is rejected by claim 26 of co-pending Application No. 18/550,613
Claim 29 is rejected by claim 29 of co-pending Application No. 18/550,613
Claim 30 is rejected by claim 30 of co-pending Application No. 18/550,613
Claim 31 is rejected by claim 39 of co-pending Application No. 18/550,613
Claim 32 is rejected by claim 39 of co-pending Application No. 18/550,613
Claim 33 is rejected by claim 33 of co-pending Application No. 18/550,613
Claim 34 is rejected by claim 34 of co-pending Application No. 18/550,613
Claim 35 is rejected by claim 35 of co-pending Application No. 18/550,613
The co-pending claims and the rejected claims differ in that the features of the rejected independent claim are in multiple claims of the co-pending application. However, it would have been obvious for one of ordinary skill in the art to combine features of the dependent claims to arrive at the instantly claimed application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Claim Rejections - 35 USC § 103
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, 3, 4, 5, 6, 7, 8, 9, 12, 13, 17, 18, 34, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5979460 A, as cited in IDS dated 09/14/2023).
With regard to Claim 1, Matsumura, directed to a method of producing tobacco filters, teaches (i) a tobacco filter for use in an aerosol generating system (Col. 6, Lines 36-39). (ii) The tobacco filter comprises a sheet-like material that may be in a crimped or creped into a rod shape (Col. 9, Lines 19-25). (iii) The pitch of the grooves for creping can be selected in a range of about 0.3 to 5 mm (Col 9, Lines 35-40), meeting the claimed range of greater than about 0.3 mm. (iv) The density of the tobacco filter material may be about 0.25 to 0.45 g/cm^3 (Abstract), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 3, Matsumura teaches (i) a tobacco filter for use in an aerosol generating system (Col. 6, Lines 36-39). (ii) The tobacco filter comprises a sheet-like material that may be in a crimped or creped into a rod shape (Col. 9, Lines 19-25). (iii) The depth of the grooves for creping can be selected from a range of 0.3 to 0.6 mm (Col. 9, Lines 41-43), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious. (iv) The density of the tobacco filter material may be about 0.25 to 0.45 g/cm3 (Abstract), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 4, Matsumura teaches wherein the pitch of the grooves for creping is in the range of about 0.3 to 5 mm (Col. 9, Lines 35-40), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 5, Matsumura teaches wherein the depth of the grooves for creping of the tobacco filter is in the range of about 0.1 to 2 mm (Col. 9, Lines 36-41), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 6, Matsumura teaches wherein a density of the tobacco filter is between about 0.25 to 0.45 g/cm3 (Abstract), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious. A prima facie case of obviousness may exist where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05(I)).
With regard to Claim 7, Matsumura teaches wherein a volume of the tobacco filter has a circumferential length of 24.5 mm and a length of 10 cm (Abstract). One of ordinary skill in the art would know that using these measurements, the volume can be calculated at approximately 4,776 mm3, having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 8, Matsumura teaches wherein a volume of the tobacco filter has a circumferential length of 24.5 mm and a length of 10 cm (Abstract). One of ordinary skill in the art would know that using these measurements, the volume per mm of axial length can be calculated at approximately 47.76 mm3, having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 9, Matsumura teaches wherein a volume of the tobacco filter has a circumferential length of 24.5 mm and a length of 10 cm (Abstract). The tobacco filter comprises a density of 0.25 to 0/45 g/cm3 (Abstract). One of ordinary skill in the art would know that using these measurements, the weight can be calculated at approximately 11.9 to 21.5 mg per mm of axial length of the tobacco filter, having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 12, Matsumura teaches wherein the sheet material has a basis weight of about 10 to 40 g/m2 (Col. 8, Lines 59-64), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 13, Matsumura teaches wherein the sheet material has a basis weight of about 10 to 40 g/m2 (Col. 8, Lines 59-64), having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 17, Matsumura teaches wherein the filter shows a pressure drop of 200 to 500 mm WG and a length of 10 cm (Abstract). One of ordinary skill in the art would know that using these measurements, the closed pressure drop can be calculated at approximately 2-5 mmH20 per mm of longitudinal length, having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 18, Matsumura teaches wherein the filter shows a pressure drop of 200 to 500 mm WG and a length of 10 cm (Abstract). One of ordinary skill in the art would know that using these measurements, the closed pressure drop can be calculated at approximately 2-5 mmH20 per mm of longitudinal length, overlapping in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 34, Matsumura teaches wherein the sheet material comprises fibers having an average length of 1 to 10 mm (Col. 5, Lines 50-55), overlapping in the range of the claimed invention and is therefore considered prima facie obvious.
With regard to Claim 35, Matsumura teaches wherein the density of the tobacco filter material may be about 0.25 to 0.45 g/cm3 (Abstract) and a basis weight of about 10 to 40 g/m2 (Col. 8, Lines 59-64). One of ordinary skill in the art would know that using these measurements, the sheet thickness can be calculated using the equation for sheet density (Col. 11, Lines 44-45), at approximately 22 to 160 µm, overlapping in the range of the claimed invention and is therefore considered prima facie obvious.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5979460 A, as cited in IDS dated 09/14/2023), as applied to claim 3 above, and further in view of Papakyrillou (US 20170360087 A1).
With regard to Claim 14, Matsumura teaches all the limitations of the claims as set forth above, however Matsumura is silent to:
Wherein the sheet material has an extended width of between 120mm and 200mm, or between 150 mm and 200 mm
Papakyrillou, directed to a hydrophobic filter, teaches a filter comprised of a crimped sheet [0027] width a width of about 100 to 250 mm to improve the resistance to draw of the filter rod [0026], having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the sheet material of Matsumura to wherein the sheet material has an extended width of between 120mm and 200mm, or between 150 mm and 200 mm because both Matsumura and Papakyrillou are directed to filters made of crimped sheet material. Papakyrillou teaches sheet material comprising a width of about 100 to 250 mm to improve the resistance to draw of the filter rod [0026] and this merely involves applying a known dimension to a known sheet material ready for improvement to yield predictable results.
With regard to Claim 15, Matsumura teaches all the limitations of the claims as set forth above, however Matsumura is silent to:
Wherein the sheet material comprises paper
Papakyrillou teaches a filter element made of sheet material which can be paper [0026] to inhibit transfer, absorption, and accumulation of water and staining of the filter element [0022].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the sheet material of Matsumura to comprise paper because both Matsumura and Papakyrillou are directed to filters made of crimped sheet material. Papakyrillou teaches a filter element made of sheet material which can be paper to inhibit transfer, absorption, and accumulation of water and staining of the filter element [0022] and this merely involves applying a known material type to a known filter component ready for improvement to yield predictable results.
Claims 16, 26, 29, 30 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5979460 A, as cited in IDS dated 09/14/2023), as applied to claim 3 above, and further in view of Pan (US 20150001148 A1)
With regard to Claim 16, Matsumura teaches all the limitations of the claims as set forth above, however Matsumura is silent to:
Wherein the sheet material comprises reconstituted tobacco
Pan, directed to a filter element, teaches a filter element comprising a base sheet with reconstituted tobacco [0042] to reduce tar delivery [0100].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the sheet material of Matsumura to comprise reconstituted tobacco because both Matsumura and Papakyrillou are directed to filters made of crimped sheet material. Pan teaches a filter element comprising a base sheet with reconstituted tobacco to reduce tar delivery [0100] and this merely involves applying a known material to a known filter component ready for improvement to yield predictable results.
With regard to Claim 26, Matsumura teaches all the limitations of the claims as set forth above, however modified Matsumura is silent to:
an aerosol- former material applied to the body of material
wherein the aerosol-former material comprises one or more of glycerine, glycerol, propylene glycol, diethylene glycol, triethylene glycol, tetraethylene glycol, 1,3-butylene glycol, erythritol, meso-Erythritol, ethyl vanillate, ethyl laurate, a diethyl suberate, triethyl citrate, triacetin, a diacetin mixture, benzyl benzoate, benzyl phenyl acetate, tributyrin, lauryl acetate, lauric acid, myristic acid, and propylene carbonate
Pan teaches (i) wherein the filter element comprises a paper containing a combination of additives [0032]. (ii) The additives may comprise monopropylene glycol, sorbitol, glycerin, triacetin, or mixtures thereof to reduce and minimize the bitter taste associated with paper filters [0032].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the filter element of Matsumura to comprise aerosol- former material applied to the body of material, wherein the aerosol-former material comprises one or more of glycerine, glycerol, propylene glycol, diethylene glycol, triethylene glycol, tetraethylene glycol, 1,3-butylene glycol, erythritol, meso-Erythritol, ethyl vanillate, ethyl laurate, a diethyl suberate, triethyl citrate, triacetin, a diacetin mixture, benzyl benzoate, benzyl phenyl acetate, tributyrin, lauryl acetate, lauric acid, myristic acid, and propylene carbonate because both Matsumura and Pan are directed to filter elements. Pan teaches a filter element comprising a combination of additives including glycerin to reduce and minimize the bitter taste associated with paper filters [0032] and this merely involves applying a known additive to a known filter element ready for improvement to yield predictable results.
With regard to Claim 29, Matsumura teaches wherein a volume of the tobacco filter has a circumferential length of 24.5 mm and a length of 10 cm (Abstract). The sheet material of the tobacco filter has a basis weight of about 10 to 40 g/m2 (Col. 8, Lines 59-64). Matsumura teaches all the limitations of the claims as set forth above, however modified Matsumura is silent to:
Wherein at least 0.02 mg, 0.03 mg, 0.04 mg, or 0.05 mg of aerosol-former material is applied to the body of material per 1 mm axial length of the body of material
Pan teaches wherein the additive may be present in an amount from about 1% to 30% by weight based on the weight of the base web [0015]. One of ordinary skill in the art would find it obvious that when combined with the weight of the filter element of Matsumura, one can calculate approximately 0.12 mg to 6.45 mg of aerosol former material applied to the filter element per 1 mm axial length, having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious. One of ordinary skill in the art would have been motivated to combine the parameters of Matsumura and Pan to reduce and minimize the bitter taste associated with paper filters [0032].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the filter element of Matsumura to wherein at least 0.02 mg, 0.03 mg, 0.04 mg, or 0.05 mg of aerosol-former material is applied to the body of material per 1 mm axial length of the body of material because both Matsumura and Pan are directed to filter elements. Pan teaches wherein the additive may be present in an amount from about 1% to 30% by weight to reduce and minimize the bitter taste associated with paper filters [0032] and this merely involves combining prior art elements according to known filter methods to yield predictable results.
With regard to Claim 30, Matsumura teaches wherein a volume of the tobacco filter has a circumferential length of 24.5 mm and a length of 10 cm (Abstract). The sheet material of the tobacco filter has a basis weight of about 10 to 40 g/m2 (Col. 8, Lines 59-64). Matsumura teaches all the limitations of the claims as set forth above, however modified Matsumura is silent to:
Wherein at least 0.5 mg or less, 0.45 mg or less, 0.04 mg or less, 0.35 mg or less, or 0.3 mg or less of aerosol-former material is applied to the body of material per 1 mm axial length of the body of material
Pan teaches wherein the additive may be present in an amount from about 1% to 30% by weight based on the weight of the base web [0015]. One of ordinary skill in the art would find it obvious that when combined with the weight of the filter element of Matsumura, one can calculate approximately 0.12 mg to 6.45 mg of aerosol former material applied to the filter element per 1 mm axial length, having a significant amount of overlap in the range of the claimed invention and is therefore considered prima facie obvious. One of ordinary skill in the art would have been motivated to combine the parameters of Matsumura and Pan to reduce and minimize the bitter taste associated with paper filters [0032].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the filter element of Matsumura to wherein at least 0.5 mg or less, 0.45 mg or less, 0.04 mg or less, 0.35 mg or less, or 0.3 mg or less of aerosol-former material is applied to the body of material per 1 mm axial length of the body of material because both Matsumura and Pan are directed to filter elements. Pan teaches wherein the additive may be present in an amount from about 1% to 30% by weight to reduce and minimize the bitter taste associated with paper filters [0032] and this merely involves combining prior art elements according to known filter methods to yield predictable results.
Claim 22, 31, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5979460 A, as cited in IDS dated 09/14/2023), as applied to claim 3 above, and further in view of Dube (US 20040261807 A1).
With regard to Claim 22, Matsumura teaches all the limitations of the claims as set forth above, however modified Matsumura is silent to:
An aerosol-modifying agent release component comprising an aerosol-modifying agent disposed within the body of material; Wherein the aerosol-modifying agent release component comprises a capsule
Wherein the capsule comprises a solid shell and a liquid core
The liquid core comprising the aerosol-modifying agent
Dube, directed to a filtered cigarette, teaches (i) a smoking article comprising a filter element with a breakable capsule, comprising a compound intended to introduce a change to the nature of mainstream smoke drawn through the filter [0043]. (ii) The breakable capsule comprises an outer shell constructed of rigid solid material [0069]. The inner region of the capsule may comprise liquid for introducing the change to the nature of mainstream smoke drawn through the filter [0012]. One of ordinary skill in the art would have been motivated to modify the filter of Matsumura with the modifying agent and capsule of Dube to enhance flavors of the mainstream smoke [0010].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the filter element of Matsumura to comprise an aerosol-modifying agent release component comprising an aerosol-modifying agent disposed within the body of material, wherein the aerosol-modifying agent release component comprises a capsule, wherein the capsule comprises a solid shell and a liquid core, and wherein the liquid core comprises the aerosol-modifying agent because both Matsumura and Dube are directed to filter elements. Dube teaches a capsule comprising a compound intended to introduce a change to the nature of mainstream smoke drawn through the filter to enhance flavors of the mainstream smoke [0010] and this merely involves applying a known capsule to a known filter element ready for improvement to yield predictable results.
With regard to Claim 31, Matsumura teaches all the limitations of the claims as set forth above, however modified Matsumura is silent to:
A tubular element located within the body of material, the tubular element comprising a cavity
Dube teaches a filter element comprising a first filter segment including a tubular filter cavity [0057] for comprising a breakable capsule to enhance flavors of mainstream smoke [0010].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the filter element of Matsumura to comprise tubular element located within the body of material, the tubular element comprising a cavity because both Matsumura and Dube are directed to filter elements. Dube teaches a first filter segment including a tubular filter cavity for comprising a breakable capsule to enhance flavors of mainstream smoke [0010] and this merely involves applying a known tubular component to a known filter element ready for improvement to yield predictable results.
With regard to Claim 32, Matsumura teaches wherein a filter material may be formed of paper. One of ordinary skill in the art would have found it obvious to modify the tubular element of modified Matsumura to be formed of paper to ensure rapid disintegration or dispersion when wet, while also maintaining its high paper strength (Col. 8, Lines 25-40).
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5979460 A, as cited in IDS dated 09/14/2023), as applied to claim 3 above, and further in view of Grzonka (US 20060102188 A1).
With regard to Claim 33, Matsumura teaches wherein the component is wrapped in a wrapper (Col. 9, Lines 25-30). Matsumura teaches all the limitations of the claims as set forth above, however Matsumura is silent to:
Wherein the component is wrapped in a wrapper having a basis weight of greater than 40 grams per m2 and/or thickness of greater than 35 µm
Grzonka, directed to a filter-tip cigarette, teaches wherein a basis weight of a wrapper is within the range of 25-46 g/m2 to reduce burn rate [0038], overlapping in the range of the claimed invention and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the wrapper of Matsumura to have a basis weight of greater than 40 grams per m2 and/or thickness of greater than 35 µm because both Matsumura and Grzonka are directed to filters for smoking articles. Grzonka teaches a wrapper with a basis weight within the range of 25-46 g/m2 to reduce burn rate [0038] and this merely involves applying a known weight to a known wrapper ready for improvement to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLUWATOSIN O DIYAN whose telephone number is (571)270-0789. The examiner can normally be reached Monday-Thursday 8:30 am - 6 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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/O.O.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights