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 .
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 3-9, 12-14, 17, 18, 29, 30 and 34-35 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 3 recites the broad recitation “less than about 0.7mm”, and the claim also recites “or between about 0.7 mm and about 1.2 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.
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.
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 microns”, and the claim also recites “less than about 500 microns” or “less than about 400 microns” 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.
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 0.12 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.
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” as well as many other narrower recitations, 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.
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” and “at least 30” 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.
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”, and the claim also recites “at least 5” and “at least 6” 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.
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 recitation “at least 20”, and the claim also recites “at least 22” and “at least 24” 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.
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 13 recites the broad recitation “less than 50”, and the claim also recites “less than 45” and “less than 40” 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.
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 recitation “between 120 mm and 200mm”, and the claim also recites “between 150 mm 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.
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 recitation “at least 1.0mm” , and the claim also recites “at least 1.2” and “at least 1.5” 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.
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 recitation “less than 2.8”, and the claim also recites “less than 2.5” 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.
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 recitation “at least 0.02” , and the claim also recites “0.03mg, 0.04mg or 0.05mg” 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.
Claim 17 recites the limitation "the closed pressure drop" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "the closed pressure drop" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim.
Moreover, claims 17 and 18 are indefinite because it is unclear what the scope of “closed” pressure drop is. The instant specification does not provide adequate guidance on the matter. Moreover, this does not appear to be an industry standard term.
For examination purposes, a “closed” pressure drop is considered as a pressure drop with the body of material being a closed system such that only the airflow moving through the body of material is measured.
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 recitation “5 mg or less”, and the claim also recites “0.45 mg or less” amongst other narrowing ranges. 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.
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 recitation “2mm to 5mm”, and the claim also recites “2 mm to 4mm” and “2mm to 3mm” 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.
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 recitation “50 and about 100 microns”, and the claim also recites “60 and 90 microns” 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.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-9, 12-18, 22, 26, 29, 30-32, 34-36 and 39 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-9, 12-18, 22, 26, 29, 30-32, 34-36 and 39 of copending Application No. 18/550,605 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
With respect to claim 1, copending Application No. 18/550,605 claims a component for an article for use in or as a combustible aerosol provision system, the component comprising: a body of material extending in a longitudinal direction, wherein the body of material comprises sheet material comprising fibers having a length in the range 2 mm to 6 mm and wherein the body of material has a density in the range between about 0.1 and 0.25 mg/mm3 (Claim 1). The differences between instant claim 1 and that of copending Application No. 18/550,605 is found in the preamble. Specifically, the claims differ in that copending Application No. 18/550,605 recites “for use in or as a combustible aerosol provisioning system” rather than being “for use in or as a non-combustible aerosol provisioning system”.
The courts have generally held that the claim preamble must be read in the context of the entire claim. 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. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). MPEP 2111.02, II. As seen in the body of the instant claim, and that of copending Application No. 18/550,605, the inventions limitations are fully set forth therein. The intended use recited in the preamble does not recite any distinct definition of the claimed inventions limitations. Thus, the statement of intended use in each claim is not considered a limitation and is of no significance to the claim construction. As a result, the claims are directed to the same invention.
With respect to claim 2, copending Application No. 18/550,605 claims a component according to claim 1, wherein the body of material comprises crimped sheet material formed having a crimp pattern comprising a series of substantially parallel ridges and grooves, wherein the average spacing between adjacent ridges is greater than about 0.3 mm (Claim 2).
With respect to claim 3, copending Application No. 18/550,605 claims wherein the body of material comprises crimped sheet material formed having a crimp pattern comprising a series of substantially parallel ridges and grooves, wherein the crimp amplitude is less than about 0.7 mm (Claim 3).
Because of the 112 issues with instant claim 3, only the broader limitation of “less than about 0.7mm” is being examined for instant claim 3. As a result, instant claim 3 and that of copending Application No. 18/550,605 are the same invention.
Instant claim 4 is the same invention as claim 4 of copending Application No. 18/550,605.
Instant claims 5-9 claim the same invention as claims 5-9, respectively, of copending Application No. 18/550,605.
Instant claims 12-18 claim the same invention as claims 12-18, respectively, of copending Application No. 18/550,605.
Instant claim 22 claims the same invention as claim 22 of copending Application No. 18/550,605.
Instant claim 26 claims the same invention as claim 26 of copending Application No. 18/550,605.
Instant claim 29 claims the same invention as claim 29 of copending Application No. 18/550,605.
Instant claim 30 claims the same invention as claim 30 of copending Application No. 18/550,605.
Instant claim 31 claims the same invention as claim 31 of copending Application No. 18/550,605.
Instant claim 32 claims the same invention as claim 32 of copending Application No. 18/550,605.
Instant claim 34 claims the same invention as claim 34 of copending Application No. 18/550,605
Instant claim 35 claims the same invention as claim 35 of copending Application No. 18/550,605.
With respect to claim 36, copending Application No. 18/550,605 claims an article for use in or as a combustible aerosol provision system, the article comprising an aerosol generating material and a downstream portion downstream of the aerosol generating material, the downstream portion comprising a component according to claim 1 (Claim 36).
The differences between instant claim 36 and that of copending Application No. 18/550,605 are found in the preamble. Specifically, the claims differ in that copending Application No. 18/550,605 recites “for use in or as a combustible aerosol provisioning system” rather than being “for use in or as a non-combustible aerosol provisioning system”.
The courts have generally held that the claim preamble must be read in the context of the entire claim. 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. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). MPEP 2111.02, II. As seen in the body of the instant claim, and that of copending Application No. 18/550,605, the inventions limitations are fully set forth therein. The intended use recited in the preamble does not recite any distinct definition of the claimed inventions limitations. Thus, the statement of intended use in each claim is not considered a limitation and is of no significance to the claim construction. As a result, the claims are directed to the same invention.
With respect to claim 39, copending Application No. 18/550,605 claims a method for forming a component for an article for use in a combustible aerosol provision system, the method comprising forming a sheet material into a body of material, wherein the sheet material comprises fibers having a length in the range 2 mm to 6 mm and wherein the body of material has a density in the range between about 0.1 and 0.25 mg/mm3 (Claim 39).
The differences between instant claim 39 and that of copending Application No. 18/550,605 is found in the preamble. Specifically, the claims differ in that copending Application No. 18/550,605 recites “for use in or as a combustible aerosol provisioning system” rather than being “for use in or as a non-combustible aerosol provisioning system”.
The courts have generally held that the claim preamble must be read in the context of the entire claim. 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. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020). MPEP 2111.02, II. As seen in the body of the instant claim, and that of copending Application No. 18/550,605, the inventions limitations are fully set forth therein. The intended use recited in the preamble does not recite any distinct definition of the claimed inventions limitations. Thus, the statement of intended use in each claim is not considered a limitation and is of no significance to the claim construction. As a result, the claims are directed to the same invention.
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, 6-9, 12, 13, 17, 18, 34 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUMURA (US 5,979,460).
With respect to claim 1, MATSUMURA discloses a tobacco filter comprising a body of material having a length of 10 cm and a circumferential length of 24.5 mm (the length implicitly representing the longitudinal direction) that comprises a sheet material comprising fibers and a density of 0.25 g/cm3 (e.g., 0.25 mg/mm3) to 0.45 g/cm3 (e.g., 0.45 mg/mm3) (Abstract).
While MATSUMURA does not explicitly provide sufficient specificity of a density significantly overlapping the claimed range, the courts have generally held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05, I.
In the instant case, the lower bound of MATSUMURA overlaps with the upper claimed bound of the density of body of material. Therefore, the claimed range is prima facie obvious.
MATSUMURA further discloses that the fibers have a length of between 1 to 10 mm (Column 5, lines 45-65).
The “for use in or as a non-combustible aerosol provision system” in the preamble is a statement of intended use and is not considered a limitation. See MPEP 2111.01, II.
With respect to claim 6, MATSUMURA discloses that a packed density of 0.15 to 20 g/cm3 (e.g., 0.15 to 20 mg/mm3).
With respect to claim 7, MATSUMURA discloses that the cross section of the body of material is circular (Column 6, lines 12-25). The circumference of 24.5 mm (abstract) equates to a radius of 3.9 mm and gives an aera of 47.7 mm2. The area times the length (e.g., 10 cm = 100mm) gives a volume of 4770 mm3, which is at least 1000 mm3, as claimed.
With respect to claim 8¸ MATSUMURA discloses that the cross section of the body of material is circular (Column 6, lines 12-25). The circumference of 24.5 mm (abstract) equates to a radius of 3.9 mm and gives an aera of 47.7 mm2. The area times the length (e.g., 10 cm = 100mm) gives a volume of 4770 mm3. This gives a volume of 47.7 mm3 per mm of axial length.
With respect to claim 9, MATSUMURA discloses that the density of the component is 0.25 mg/mm3 (See rejection of claim 1). With an axial length of 10 cm (e.g., 100mm) and a volume of 47.7 mm3 per mm of axial length (See rejection of claim 8), the weight per mm is (0.25 mg/mm3 x 47.7 mm3) is 11.9 mg.
With respect to claims 12 and 13, MATSUMURA discloses that the sheet has a basis weight of 20 to 35 g/m2 (Abstract).
With respect to claims 17 and 18, MATSUMURA discloses a pressure drop of between 200 and 500 mm of water across the formed filter (Column 3, lines 30-37; Column 3, lines 2-20). The length of the body is 10 cm (e.g., 100mm) (Abstract). Thus, the pressure drop is between 2 and 5 mm water per mm of longitudinal length.
With respect to claim 34, MATSUMURA further discloses that the fibers have a length of between 1 to 10 mm (Column 5, lines 45-65).
With respect to claim 39, MATSUMURA discloses a tobacco filter comprising a body of material having a length of 10 cm and a circumferential length of 24.5 mm (the length implicitly representing the longitudinal direction) that comprises a sheet material comprising fibers and a density of 0.25 g/cm3 (e.g., 0.25 mg/mm3) to 0.45 g/cm3 (e.g., 0.45 mg/mm3) (Abstract).
While MATSUMURA does not explicitly provide sufficient specificity of a density significantly overlapping the claimed range, the courts have generally held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05, I.
In the instant case, the lower bound of MATSUMURA overlaps with the upper claimed bound of the density of body of material. Therefore, the claimed range is prima facie obvious.
MATSUMURA further discloses that the fibers have a length of between 1 to 10 mm (Column 5, lines 45-65).
MATSUMURA discloses forming said article by forming the sheet into the body of material by rolling it up into a rod (Column 10, lines 1-15).
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Claim(s) 2-5, 14, 15, 35, 36 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUMURA (US 5,979,460) in view of PAPAKYRILLOU (US 2017/0360087).
With respect to claims 2 and 4, MATSUMURA discloses that the body of material is a crimped sheet (Column 6, lines 7-13) but does not explicitly disclose that the crimp pattern comprises a series of parallel ridges and grooves with an average spacing between ridges greater than about 0.3 mm.
PAPAKYRILLOU disclose a filter material (Abstract) that comprises s sheet of crimped material with parallel ridges and valleys (Paragraphs [0064], [0065]). The crimp pattern comprise ridges and valleys (e.g., grooves) that have a pitch distance of 0.5 to 2 mm in order to provide a desired resistance to draw (Paragraph [0028]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the crimp of MATSUMURA having parallel ridges and grooves and a spacing between adjacent ridges of 0.5 to 2 mm, as taught by PAPAKYRILLOU so as to provide a desired resistance to draw.
With respect to claim 3, MATSUMURA discloses that the body of material is a crimped sheet (Column 6, lines 7-13) but does not explicitly disclose that the crimp pattern comprises a series of parallel ridges and grooves with an amplitude of less than 0.7 mm.
PAPAKYRILLOU disclose a filter material (Abstract) that comprises s sheet of crimped material with parallel ridges and valleys (Paragraphs [0064], [0065]). The crimp pattern comprise ridges and valleys (e.g., grooves) that have a pitch distance of 0.5 to 2 mm, and an amplitude of 0.25 mm and 1.5 mm in order to provide a desired resistance to draw (Paragraph [0028]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the crimp of MATSUMURA having parallel ridges and grooves and a spacing between adjacent ridges of 0.5 to 2 mm and amplitude of between 0.24 and 1.5 mm, as taught by PAPAKYRILLOU so as to provide a desired resistance to draw.
With respect to claim 5, MATSUMURA discloses that the body of material is a crimped sheet (Column 6, lines 7-13) but does not explicitly disclose that the crimp pattern comprises a series of parallel ridges and grooves with an amplitude of less than 0.500 microns.
PAPAKYRILLOU disclose a filter material (Abstract) that comprises s sheet of crimped material with parallel ridges and valleys (Paragraphs [0064], [0065]). The crimp pattern comprise ridges and valleys (e.g., grooves) that have a pitch distance of 0.5 to 2 mm, and an amplitude of 0.25 mm and 1.5 mm in order to provide a desired resistance to draw (Paragraph [0028]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the crimp of MATSUMURA having parallel ridges and grooves and a spacing between adjacent ridges of 0.5 to 2 mm and amplitude of between 0.24 and 1.5 mm (240 to 1500 microns), as taught by PAPAKYRILLOU so as to provide a desired resistance to draw.
With respect to claim 14, MATSUMURA does not explicitly disclose that the sheet material has an extended width of between 120 and 200 mm.
PAPAKYRILLOU discloses that the crimped material has a width of 50 to 300 mm (Paragraph [0026]) prior to crimping (e.g., extended width) in order to give a circumferential length of between 15 and 30 mm. It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the filter of MATSUMURA with a width as disclosed by PAPAKYRILLOU so as to provide the body of material with the disclosed circumference of 24.5 mm.
With respect to claim 15, MATSUMURA does not explicitly disclose that the sheet material comprises paper. PAPAKYRILLOU discloses that the filter material comprises paper that exhibits hydrophobic properties (Paragraph [0020]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide hydrophobic paper to the filter of MATSUMURA, as taught by PAPAKYRILLOU so that it has hydrophobic properties.
With respect to claim 35, MATSUMURA does not explicitly disclose the thickness of the sheet. PAPAKYRILLOU discloses that the sheet has a thickness of between 20 and 100 microns (Paragraph [0030]), and a width of 50 to 300 mm (Paragraph [0026]) prior to crimping (e.g., extended width) in order to give a circumferential length of between 15 and 30 mm. It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the filter of MATSUMURA with a width and thickness as disclosed by PAPAKYRILLOU so as to provide the body of material with the disclosed circumference of 24.5 mm.
With respect to claims 36 and 37, MATSUMURA does not explicitly disclose the aerosol generating material and the article of claim 1 in a system, and being a downstream portion. PAPAKYRILLOU discloses that the filter element is used in a non-combustible aerosol device (Paragraphs [0002], [0003], [0012]) wherein the device comprises an aerosol generating material section, 20, and downstream of said section is the filter member (e.g., body of material of MATSUMURA) (Paragraph [0063]; Figure 1). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention to provide the body of material of MATSUMURA in the downstream end of the article of PAPAKYRILLOU so as to provide an article that the user can inhale aerosol from .
The filter end represents the downstream end because the air flows from the end of the aerosol generating section, at 70, to the filter end and into the user’s mouth.
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Claim(s) 16, 26, 29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUMURA (US 5,979,460) in view of PAN et al. (US 2015/0001148).
With respect to claim 16, MATSUMURA does not explicitly disclose that the sheet comprises reconstituted tobacco. PAN et al. discloses a crimped filter material for a smoking article (Abstract; Paragraph [0002]). The filter material (e.g., body of material of MATSUMURA) includes reconstituted tobacco (Paragraph [0042]) and additives that synergistically reduce and minimize the dry, astringent, harsh irritation and bitter taste of filters (Paragraph [0032]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide reconstituted tobacco in the body of material of MATSUMURA, as taught by PAN et al. so as to synergistically reduce and minimize the dry, astringent, harsh irritation and bitter taste of filters.
With respect to claim 26, MATSUMURA does not explicitly disclose the claimed aerosol-forming material.
PAN et al. discloses a crimped filter material for a smoking article (Abstract; Paragraph [0002]). The filter material (e.g., body of material of MATSUMURA) includes reconstituted tobacco (Paragraph [0042]) and additives that synergistically reduce and minimize the dry, astringent, harsh irritation and bitter taste of filters (Paragraph [0032]). The additives include glycerin, monopropylene glycol, triacetin, etc. (Paragraphs [0013], [0015]).
It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide reconstituted tobacco in the body of material of MATSUMURA, as well as glycerin, monopropylene glycol or triacetin, as taught by PAN et al. so as to synergistically reduce and minimize the dry, astringent, harsh irritation and bitter taste of filters.
With respect to claim 29, PAN et al. discloses that the additive is present in an amount of 1 to 30 wt% of the body of material (Paragraph [0015]). MATSUMURA discloses a tobacco filter comprising a body of material having a length of 10 cm and a circumferential length of 24.5 mm (the length implicitly representing the longitudinal direction) that comprises a sheet material comprising fibers and a density of 0.25 g/cm3 (e.g., 0.25 mg/mm3) to 0.45 g/cm3 (e.g., 0.45 mg/mm3) (Abstract). With an axial length of 10 cm (e.g., 100mm) and a volume of 47.7 mm3 per mm of axial length (See rejection of claim 8), the weight per mm is (0.25 mg/mm3 x 47.7 mm3) is 11.9 mg. At 10 wt% additive, considering a homogeneous distribution thereof, each mm of axial length of the body of material would have 1.19 mg (e.g., 11.9 mg/mm x 0.10) of additive, which overlaps with at least 0.05 mg as claimed.
With respect to claim 30, PAN et al. discloses that the additive is present in an amount of 1 to 30 wt% of the body of material (Paragraph [0015]). MATSUMURA discloses a tobacco filter comprising a body of material having a length of 10 cm and a circumferential length of 24.5 mm (the length implicitly representing the longitudinal direction) that comprises a sheet material comprising fibers and a density of 0.25 g/cm3 (e.g., 0.25 mg/mm3) to 0.45 g/cm3 (e.g., 0.45 mg/mm3) (Abstract). With an axial length of 10 cm (e.g., 100mm) and a volume of 47.7 mm3 per mm of axial length (See rejection of claim 8), the weight per mm is (0.25 mg/mm3 x 47.7 mm3) is 11.9 mg. At 1 wt% additive, considering a homogeneous distribution thereof, each mm of axial length of the body of material would have .119 mg (e.g., 11.9 mg/mm x 0.01) of additive, which overlaps with 0.5 mg or less as claimed.
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Claim(s) 22, 31 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUMURA (US 5,979,460) in view of DUBE et al. (US 2004/0261807).
With respect to claim 22, MATSUMURA does not explicitly disclose the claimed aerosol-modifying agent release component comprising a solid shell capsule and liquid core being the modifying agent.
DUBE et al. discloses a filtered cigarette (Abstract). The filter comprises a rupturable capsule comprising a payload (Abstract; Paragraphs [0011]-[0015]) thereby allowing the user to selectively moisten, cool or otherwise modify the nature or character of the mainstream smoke (Paragraph [0009]).
The capsule is a solid shell and the payload therein is a liquid material that may be a breath freshening agent, a deodorizing agent a moistening agent or a cooling agent for the smoke (Paragraphs [0069] and [0070]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the capsule in the body of material of MATSUMURA, as taught by DUBE et al. so that the user can selectively moisten, cool or otherwise modify the nature or character of the mainstream smoke
With respect to claim 31, MATSUMURA does not explicitly disclose the tubular element. DUBE et al. discloses a filtered cigarette (Abstract). The filter comprises a rupturable capsule comprising a payload (Abstract; Paragraphs [0011]-[0015]) thereby allowing the user to selectively moisten, cool or otherwise modify the nature or character of the mainstream smoke (Paragraph [0009]). The capsule is held within an inner filter segment having a circular hollow cross section and outer surface (e.g., tubular element) to hold the capsule therein (Paragraphs [0078] and [0079]).
The capsule is a solid shell and the payload therein is a liquid material that may be a breath freshening agent, a deodorizing agent a moistening agent or a cooling agent for the smoke (Paragraphs [0069] and [0070]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide the hollow tubular element within the body of material of MATSUMURA so that a capsule can be held in the body of material of MATSUMURA, as taught by DUBE et al. so that the user can selectively moisten, cool or otherwise modify the nature or character of the mainstream smoke.
With respect to claim 32, DUBE et al. does not explicitly disclose that the tubular element is formed of paper. MATSUMURA discloses that the filter material (and therefore the inner filter material of DUBE et al.) is formed of paper so that rapid disintegration and dispersion is insured when wetted with rain water (Column 8, lines 25-40). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to use paper as the inner filter material of DUBE et al., as taught by MATSUMURA so that the filter section can be disintegrated when disposed of in the environment, such as roads or streets.
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Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUMURA (US 5,979,460) in view of GRZONKA (US 2006/0102188).
With respect to claim 33¸ MATSUMURA does not explicitly disclose a wrapper having the claimed basis weight. GRZONKA disclose a filter of a cigarette having a wrapping, 4, (Figures 1 and 3; Abstract; Paragraphs [0010]-[0011]). The wrapping has a basis weight of between 25-45 g/m2 (Paragraphs [0031], [0032]) and provides a material that does not require any serious changes to the manufacturing process (Paragraphs [0013], [0014]). It would have been obvious to one having ordinary skill in the art, prior to the effective filing date of the claimed invention, to provide a wrapping to the filter element of MATSUMURA having the basis weight disclosed by GRZONKA so that the filter can be wrapped without requiring any changes to the manufacturing process.
Conclusion
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/ALEX B EFTA/Primary Examiner, Art Unit 1745