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, 14-18, 22, 26, 29-30, 33-36, and 39-40 are pending and are subject to this Office Action.
Claims 1 and 3-4 are amended.
Claims 31-32 are cancelled.
Claims 36 and 39-40 are withdrawn.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 7/09/2026 containing
amendments and remarks to the claims.
The rejection of claim 4 under 35 USC 112(b) has been withdrawn due to the claim amendments.
The rejection of claim 1 on the grounds of non-statutory double patenting over Application 18/718555 has been withdrawn due to the claim amendments.
Terminal Disclaimer
The terminal disclaimer filed on 7/09/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Application 18/550,495 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The rejection of claims 1, 3-9, 12, 14-18, 22, 26, 29-35 on the grounds of non-statutory double patenting over Application 18/550,495 has therefore been withdrawn.
Response to Arguments
Applicant's arguments filed 7/09/2026 have been fully considered but they are not persuasive.
On page 9, the Applicant argues that as Matsumura is concerned with maintaining a homogeneous filter cross section while balancing pressure drop and firmness, and introducing a tubular element located within the body of material, the tubular element comprising a cavity, would run contrary to that objective because it would replace Matsumura’s homogeneous rod structure with a central internal cavity and a distinct internal structure.
The Examiner does not find this to be persuasive. Matsumura teaches the tobacco filter of the present invention may be formed by rolling up the sheet like material into a rod, in particular a cylinder (Col. 10, lines 1-5), and the filter material having a certain packing density, adequate permeability, high firmness and homogeneous cross section can be imparted (Col. 10, lines 6-10). Matsumura does not specify that there may or may not be a central internal cavity in the radial center of the filter, as would typically be the case for a rolled up sheet material into a cylinder, just that the filter has a homogeneous cross section. Therefore, Matsumura having a central internal cavity for holding a capsule as taught by Dube would still be pursuant to the objective of Matsumura. Further, Dube teaches cavity 214 is only along a portion of the length of the filter element ([0043]), and as such modified Matsumura would have the homogeneous rod structure as described within the portion of the filter element not containing the cavity.
On pages 9-10, the Applicant argues that amended claim 1 requires a paper tubular element located within the claimed body of material and that the Examiner’s proposed modification would require more than a simple substitution of known elements and the Office Action does not identify a teaching or suggestion in the cited references to make the modification but relies on the Applicant’s disclosure.
The Examiner does not find this to be persuasive. Dube teaches it is desirable to have a smoking article capable of releasing an agent for enhancing the sensory attributes of the mainstream smoke [0010] and this is accomplished through the filter segment having a tubular shaped segment that possesses the ability to receive and maintain in position at least one breakable capsule [0015]. Therefore, one of ordinary skill in the art would be motivated to modify the filter segment of Matsumura to have a tubular element comprising a cavity for the purpose of holding a capsule to enhance sensory attribute of the smoke as taught by Dube. Further, Matsumura teaches the filter comprises the mentioned constitute component and has a nonwoven web structure, and therefore this ensures rapid disintegration or dispersion when wetted with rainwater despite its high dry paper strength (Col. 8, lines 34-37). Therefore, one having ordinary skill in the art would be motivated to make the tubular element of modified Matsumura comprise paper, as Matsumura teaches the filter being formed of paper insures rapid disintegrating or dispersion when wetter with rainwater. Further, this merely involves the selection of a known material based on its suitability for its intended use.
The following is a modified rejection made based on the claim amendments.
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) 1, 3-9, 12, 17-18, 22, and 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5,979,460) in view of Dube (US2004/0261807).
Regarding claim 1, Matsumura teaches:
A component for an article for use in or as a combustible aerosol provision system (tobacco filter, Col. 9, lines 19-20), the component comprising:
a body of material extending in a longitudinal direction, wherein the body of material comprises crimped sheet material formed having a crimp pattern comprising a series of substantially parallel ridges and grooves (sheet-like material that is creped, Col. 9, lines 21-24).
wherein the average spacing between adjacent ridges is in the range of about 0.3 to 5 mm (Col. 9, lines 35-40, where the pitch of the grooves for creping the sheet of material corresponds to the average spacing between adjacent ridges) which falls within the claimed range of greater than about 0.3 mm.
wherein the average density of said body of material is between about 0.25 to 0.45 mg/mm3 (0.25 to 0.45 g/cm3, Abstract) which overlaps the claimed range of between 0.1 and about 0.25 mg/mm3 and is therefore prima facie obvious.
Matsumura does not appear to explicitly disclose (I) a tubular element located within the body of material, the tubular element comprising a cavity and (II) wherein the tubular element comprise paper.
In regard to (I) Dube, directed to a filtered cigarette, teaches:
A smoking article comprising a filter element, with a breakable capsule incorporated into its filter element ([0011]).
It would be desirable to provide a cigarette that is capable of releasing an agent for enhancing the sensory attributes of the mainstream smoke (e.g., by flavoring that smoke) ([0010]).
The filter segment comprises a tubular shaped segment that possesses the ability to receive and maintain in position at least one breakable capsule ([0015]), which defines a tubular element located within the body of material, the tubular element comprising a cavity.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the filter element of Matsumura by incorporating a breakable capsule and a tubular element comprising a cavity to receive the capsule as taught by Dube, because both Matsumura and Dube are directed to filters for smoking articles, Dube teaches the capsule has a flavorant that enhances sensory attributes of the smoke, and this merely involves incorporating a known filter element for a smoking article (i.e. capsule) to a similar filter element for a smoking article to yield predictable results.
In regard to (II), modified Matsumura does not appear to explicitly disclose wherein the tubular element comprise paper.
However, Matsumura teaches that the filter material (and therefore the tubular element) is formed of paper so that rapid disintegrating or dispersion is insured when wetted with rainwater (Col. 8, lines 25-40).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the tubular element of modified Matsumura comprise paper, as Matsumura teaches the filter being formed of paper insures rapid disintegrating or dispersion when wetter with rainwater, and this merely involves the selection of a known material based on its suitability for its intended use.
Regarding claim 3, Matsumura teaches:
A component for an article for use in or as a combustible aerosol provision system (tobacco filter, Col. 9, lines 19-20), the component comprising:
a body of material extending in a longitudinal direction, wherein the body of material comprises crimped sheet material formed having a crimp pattern comprising a series of substantially parallel ridges and grooves (sheet-like material that is creped, Col. 9, lines 21-24).
wherein the crimp amplitude is between 0.1 to 2 mm (Col. 9, lines 35-35, where the depth of the grooves for creping the sheet of material corresponds to the crimp amplitude). The range taught by the prior art overlaps the claimed range of less than about 0.7 mm and is therefore prima facie obvious.
wherein the average density of said body of material is between about 0.25 to 0.45 mg/mm3 (0.25 to 0.45 g/cm3, Abstract) which overlaps the claimed range of between 0.1 and about 0.25 mg/mm3 and is therefore prima facie obvious.
Matsumura does not appear to explicitly disclose (I) a tubular element located within the body of material, the tubular element comprising a cavity and (II) wherein the tubular element comprise paper.
In regard to (I) Dube, directed to a filtered cigarette, teaches:
A smoking article comprising a filter element, with a breakable capsule incorporated into its filter element ([0011]).
It would be desirable to provide a cigarette that is capable of releasing an agent for enhancing the sensory attributes of the mainstream smoke (e.g., by flavoring that smoke) ([0010]).
The filter segment comprises a tubular shaped segment that possesses the ability to receive and maintain in position at least one breakable capsule ([0015]), which defines a tubular element located within the body of material, the tubular element comprising a cavity.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the filter element of Matsumura by incorporating a breakable capsule and a tubular element comprising a cavity to receive the capsule as taught by Dube, because both Matsumura and Dube are directed to filters for smoking articles, Dube teaches the capsule has a flavorant that enhances sensory attributes of the smoke, and this merely involves incorporating a known filter element for a smoking article (i.e. capsule) to a similar filter element for a smoking article to yield predictable results.
In regard to (II), modified Matsumura does not appear to explicitly disclose wherein the tubular element comprise paper.
However, Matsumura teaches that the filter material (and therefore the tubular element) is formed of paper so that rapid disintegrating or dispersion is insured when wetted with rainwater (Col. 8, lines 25-40).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the tubular element of modified Matsumura comprise paper, as Matsumura teaches the filter being formed of paper insures rapid disintegrating or dispersion when wetter with rainwater, and this merely involves the selection of a known material based on its suitability for its intended use.
Regarding claim 4, Matsumura teaches wherein the average spacing between adjacent ridges is in the range of about 0.3 to 5 mm (Col. 9, lines 35-40, where the pitch of the grooves for creping the sheet of material corresponds to the average spacing between adjacent ridges) which overlaps the claimed range of greater than about 0.4 mm and is therefore prima facie obvious.
Regarding claim 5, Matsumura teaches wherein the body of material comprises crimped fibers (where the sheet-like material comprises fibers, Col. 5, lines 33-50, and sheet-like material is creped, Col. 9, lines 20-25) having a crimp amplitude of between 100 to 2000 um (0.1 to 2 mm, Col. 9, lines 35-35, where the depth of the grooves for creping the sheet of material corresponds to the crimp amplitude) and the range taught by the prior art overlaps the claimed range of less than about 600 um and is therefore prima facie obvious.
Regarding claim 6, Matsumura teaches wherein the average density of said body of material is between about 0.25 to 0.45 mg/mm3 (0.25 to 0.45 g/cm3, Abstract) which is merely close to the claimed range of between about 0.15 mg/mm3 and about 0.2 mg/mm3. The Courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05 (I).
Regarding claim 7, Matsumura teaches wherein the body of material has a circumferential length of 24.5 mm and a length of 10 cm (Col. 10, lines 15-20), which equates to a volume of about 4777 mm3, which falls within the claimed range of at least 100 mm3.
Regarding claim 8, Matsumura teaches wherein the body of material has a circumferential length of 24.5 mm and a length of 10 cm (Col. 10, lines 15-20), which equates to a volume of about 47.77 mm3 per mm of axial length of the body of material, which falls within the claimed range of at least 19 mm3.
Regarding claim 9, Matsumura teaches wherein the body of material has a circumferential length of 24.5 mm and a length of 10 cm (Col. 10, lines 15-20) and a density of about 0.25 to 0.45 mg/mm3 (0.25 to 0.45 g/cm3, Abstract) which equates to a weight of about 11.9 to 21.5 mg per mm of axial length of the body of material, which falls within the claimed range of at least 4 mg per mm of axial length of the body of material.
Regarding claim 12, Matsumura teaches wherein the sheet material has a basis weight of about 10 to 40 g/m2 (Col. 8, lines 49-67), which overlaps the claimed range of at least 20g/m2 and is therefore prima facie obvious.
Regarding claim 17, Matsumura teaches wherein the closed pressure drop across the body of material is about 200 to 500 mm water gauge (WG) and the body of material has a length of 10 cm (Col. 10, lines 15-20) which equates to the closed pressure drop across the body of material being 2 to 5 mmH2O per mm of longitudinal length, and therefore falls within the claimed range of at least 1.0 mmH2O per mm of longitudinal length.
Regarding claim 18, Matsumura teaches wherein the closed pressure drop across the body of material is about 200 to 500 mm water gauge (WG) and the body of material has a length of 10 cm (Col. 10, lines 15-20) which equates to the closed pressure drop across the body of material being 2 to 5 mmH2O per mm of longitudinal length, and therefore overlaps the claimed range of less than 3.0 mmH2O per mm of longitudinal length and is prima facie obvious.
Regarding claim 22, Matsumura does not appear to explicitly disclose 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 and 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:
A smoking article comprising a filter element, with a breakable capsule incorporated into its filter element ([0011]).
An aerosol-modifying agent release component (i.e. breakable capsule) comprising an aerosol-modifying agent ([0012]: inner region of capsule composed of a compound that is intended to introduce some change to the nature of the mainstream smoke drawn through the filter element) disposed within the body of material ([0012]: the filter element incorporates the capsule), wherein the aerosol-modifying agent release component comprises a capsule and wherein the capsule comprises a solid shell and a liquid core, the liquid core comprising the aerosol-modifying agent ([0012]: an outer shell and an inner region that incorporates a suitable liquid carrier).
It would be desirable to provide a cigarette that is capable of releasing an agent for enhancing the sensory attributes of the mainstream smoke (e.g., by flavoring that smoke) ([0010]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the filter element of Matsumura by incorporating a breakable capsule as taught by Dube, because both Matsumura and Dube are directed to filters for smoking articles, Dube teaches the capsule has a flavorant that enhances sensory attributes of the smoke, and this merely involves incorporating a known filter element for a smoking article (i.e. capsule) to a similar filter element for a smoking article to yield predictable results.
Regarding claim 34, Matsumura teaches wherein the sheet material comprises fibers having an average length of 1 to 10 mm (Col. 5, lines 50-55) which overlaps the claimed range of 2 mm to 6 mm and is therefore prima facie obvious.
Regarding claim 35, Matsumura teaches the sheet has a density of about 0.25 to 0.45 mg/mm3 (0.25 to 0.45 g/cm3, Abstract) and a basis weight of about 10 to 40 g/m2 (Col. 8, lines 49-67), and using the equation provided for sheet density (Col. 11, lines 44-45), the sheet thickness equates to a thickness of between about 22 to 160 um, which overlaps the claimed range of between about 50 and about 100 um and is therefore prima facie obvious.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5,979,460) in view of Dube (US2004/0261807) as applied to claim 3 above, and further in view of Papakyrillou (US2017/0360087).
Regarding claim 14, Matsumura teaches that the body of material has a circumferential length of 24.5 mm (Col. 10, lines 15-20). Matsumura is silent to the extended width of the sheet material.
However, Papakyrillou, directed to a filter for a smoking article, teaches:
A filter with a crimped sheet of material ([0027]) that has a width of 50 to 300 mm prior to crimping (i.e. extended width) in order to give a circumferential length of between 15 and 30 mm ([0026]).
Therefore it would be obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to make the filter of Matsumura have an extended width of 50 to 300 mm as taught by Papakyrillou in order to provide the body of material with the disclosed circumferential length of 24.5 mm. The range taught by the prior art overlaps the claimed range of between 120 mm and 200 mm and is therefore prima facie obvious.
Regarding claim 15, Matsumura does not appear to explicitly disclose wherein the sheet material comprises paper.
However, Papakyrillou, directed to a filter for a smoking article, teaches:
The filter material comprises paper that exhibits hydrophobic properties ([0020]) which can inhibit the transfer, absorption and accumulation of humectant, water and staining of the filter element that occurs when the smoking article is stored ([0022]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the filter of Matsumura comprise paper as taught by Papakyrillou, because both Matsumura and Papakyrillou are directed to filters for smoking articles, Papakyrillou teaches paper has hydrophobic properties which can inhibit staining of the filter during storage, and this merely involves the selection of a known material based on its suitability for its intended use.
Claim(s) 16, 26, and 29-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5,979,460) in view of Dube (US2004/0261807) as applied to claim 3 above, and further in view of Pan (US2015/0001148).
Regarding claim 16, Matsumura does not appear to explicitly disclose wherein the sheet material comprises reconstituted tobacco.
However, Pan, directed to a filter element, teaches:
The filter element may comprise a base web of reconstituted tobacco ([0042]).
Reconstituted tobacco paper filters biodegrade at a faster rate ([0099]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the filter element of Matsumura comprise reconstituted tobacco as taught by Pan, because both Matsumura and Pan are directed to filters for smoking articles, Pan teaches reconstituted tobacco paper filters biodegrade faster, and this merely involves the selection of a known material based on its suitability for its intended use.
Regarding claim 26, Matsumura does not appear to explicitly disclose 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, directed to a filter element, teaches:
The filter element comprises additives which reduce and minimize the dry, astringent, harsh, wood, paper, irritation, and bitter taste normally associated with paper filters when incorporated into a smoking article ([0032]).
The additive may comprise monopropylene glycol, sorbitol, glycerin, triacetin, or mixtures thereof ([0015]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to make the filter element of Matsumura comprise an aerosol-former such as monopropylene glycol, sorbitol, glycerin, triacetin, or mixtures thereof as taught by Pan, because both Matsumura and Pan are directed to filters for smoking articles, Pan teaches the filter element comprises additives that minimize irritation and bitter taste, and this merely involves incorporation of a known additive for a filter element to a similar filter element to yield predictable results.
Regarding claim 29, Pan further teaches the additive may be present on the base web in an amount from about 1% to about 30% by weight based on the weight of the base web ([0015]). Therefore as Matsumura teaches wherein the body of material has a circumferential length of 24.5 mm and a length of 10 cm (Col. 10, lines 15-20) and a density of about 0.25 to 0.45 mg/mm3 (0.25 to 0.45 g/cm3, Abstract), assuming a homogeneous distribution thereof, this equates to about 0.12 mg to 6.45 mg of aerosol former material applied to the body of material per 1 mm axial length, which falls within the claimed range of at least 0.02 mg per mm of axial length of the body of material.
Regarding claim 30, Pan further teaches the additive may be present on the base web in an amount from about 1% to about 30% by weight based on the weight of the base web ([0015]). Therefore as Matsumura teaches wherein the body of material has a circumferential length of 24.5 mm and a length of 10 cm (Col. 10, lines 15-20) and a density of about 0.25 to 0.45 mg/mm3 (0.25 to 0.45 g/cm3, Abstract), assuming a homogeneous distribution thereof, this equates to about 0.12 mg to 6.45 mg of aerosol former material applied to the body of material per 1 mm axial length, which overlaps the claimed range of 0.5 mg or less per mm of axial length of the body of material and is therefore prima facie obvious.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumura (US 5,979,460) in view of Dube (US2004/0261807) as applied to claim 3 above, and further in view of Grzonka (US2006/0102188).
Regarding claim 33, Matsumura teaches wherein the component is wrapped in a wrapper (Col. 9, lines 25-30, wrapped up with a wrapping tissue or paper). However, Matsumura is silent to the basis weight of the wrapper.
Grzonka, directed to a filter for cigarettes, teaches:
A filter wrapping in a tipping paper or other wrapper ([0015]).
The basis weight of the tipping or other wrapper is advantageously within the range of 25-45 g/m.sup.2 ([0031]).
The filter tip economises on material without requiring serious changes to the manufacturing process and to the materials used [0013].
Therefore it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to make the wrapper around the filter component of Matsumura have a basis weight of between 35 and 45 g/m2 as taught by Grzonka, as both Matsumura and Grzonka are directed to filters for smoking articles that are wrapped in a wrapper, Grzonka teaches this allows not requiring serious changes to the manufacturing process, and this merely involves discovering optimum or workable ranges by routine experimentation.
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 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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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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