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 .
Response to Amendment
Amendment filed 7/8/2026 has been entered and fully considered. Claims 1-9, 12-18, 22, 26, 29, 30, 33-37 and 39 are pending. Claims 10, 11, 19-21, 23-25, 27, 28, 31, 32, and 38 are cancelled. Claims 1, 3-9, 12-14, 17, 18, 29, 30, 34, 35 and 39 are amended. No new matter is added.
Response to Arguments
Applicant's arguments filed 7/8/2026 have been fully considered but they are not persuasive.
Applicant argues that the double patenting rejection should be withdrawn. The claims have been amended to no longer overlap in scope.
Examiner respectfully disagrees. The copending application has been amended to include substantially similar limitations as the instant amendment.
The applicant argues that claim 1 has been amended to recite a tubular element located within the body of material, and that the tubular element comprises a cavity and that the tubular element comprises paper. Claim 39 as been amended similarly. Thus, the rejection is overcome.
Applicant further argues that the Examiner’s proposed modification of Dube and Matsumura would require more than a simple substitution of known elements. It would require modifying Matsumura’s uniform filter structure to include Dube’s capsule holding hollow structure, then further replacing Dube’s inner filter material with paper, and doing so within the claimed sheet-material body. Thus, the proposed modification appears to be based on impermissible hindsight.
Examiner respectfully disagrees. Dube discloses that the filter element may be a multi-segment filter element comprising a traditional cigarette filter element, as well as the filter element comprising the capsule component (Paragraph [0053]). One having ordinary skill in the art would appreciate that the “traditional” filter segment is representative of the filter element of Matsumura. Thus, both of the filter segments of Matsumura and of Dube can coexist in the same cigarette and no additional modification to the cigarette would be needed.
It is further noted that the rejections of previous claims 31 and 32 did not rely on substitution of the filter segments, but rather the addition of the filter segment taught by Dube. As noted above, the inclusion of an additional filter to that of Matsumura is within the scope of Dube.
Applicant argues that amended claim 1 does not merely require a structure for holding a capsule. It requires a paper tubular element located within the claimed body of material and that the tubular element comprises a capsule. The reasons for such a structure allows for aerosol cooling and the sheet-material thermally insulates the user’s lips.
The courts have generally held that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggests the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). MPEP 2144, IV.
As noted in the rejection, the motivation to provide the filter of Dube in the cigarette of Matsumura is for the purpose of allowing the user to selectively moisten, cool or otherwise modify the nature or character of the mainstream smoke. The structure of Dube’s filter also includes structures that overlap with the claimed tubular element and its material construction.
Applicant argues that the proposed modification would require more than a simply substitution.
The rejections of previous claims 31 and 32 did not rely on substitution of the filter segments, but rather the addition of the filter segment taught by Dube. As noted above, the inclusion of an additional filter to that of Matsumura is within the scope of Dube.
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, 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 and the component comprising a tubular element located within the body of the material, the tubular element comprising a cavity wherein the tubular element comprises paper (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 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 and the component comprising a tubular element located within the body of the material, the tubular element comprising a cavity wherein the tubular element comprises paper (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, 22, 34 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUMURA (US 5,979,460) and DUBE et al. (US 2004/0261807).
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).
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.
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.
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) (Column 3, lines 5-20)
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 100 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 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 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).
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.
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) 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) and DUBE et al. (US 2004/0261807) as applied to claims 1, 6-9, 12, 13, 17, 18, 22, 34 and 37, and further in view of PAPAKYRILLOU (US 2017/0360087).
With respect to claims 2 and 4, modified MATSUMURA discloses that the body of material is a crimped sheet (MATSUMURA; 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 modified 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, modified 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 modified 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, modified MATSUMURA discloses that the body of material is a crimped sheet (MATSUMURA; 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 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 modified 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, modified 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 modified MATSUMURA with a width as disclosed by PAPAKYRILLOU (e.g., 120 to 200 mm) so as to provide the body of material with the disclosed circumference of 24.5 mm.
With respect to claim 15, modified 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 modified MATSUMURA, as taught by PAPAKYRILLOU so that it has hydrophobic properties.
With respect to claim 35, modified 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 modified 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, modified 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 modified 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) and DUBE et al. (US 2004/0261807) as applied to claims 1, 6-9, 12, 13, 17, 18, 22, 34 and 37, and further in view of PAN et al. (US 2015/0001148).
With respect to claim 16, modified 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 modified 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, modified 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 modified 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]). Modified 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) (MATSUMURA; 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 0.02 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]). Modified 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) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over MATSUMURA (US 5,979,460) and DUBE et al. (US 2004/0261807) as applied to claims 1, 6-9, 12, 13, 17, 18, 22, 34 and 37, and further in view of GRZONKA (US 2006/0102188).
With respect to claim 33¸ modified 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 modified MATSUMURA having the basis weight disclosed by GRZONKA so that the filter can be wrapped without requiring any changes to the manufacturing process.
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.
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/ALEX B EFTA/Primary Examiner, Art Unit 1745
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