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 1-14 are pending and are subject to this office action. Claims 15-20 are withdrawn from consideration. This is the first Office Action on the merits of the claims.
Examiner Comment
Claim 19 recites, “A system comprising an article according to claim 14”. However, claim 14 is directed to a mouthpiece and does not recite an article. Claims 15-18 are directed to an article. Therefore, it would appear that claim 19 should read a system comprising an article according to claim 15.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-14 in the reply filed on 03/23/2026 is acknowledged.
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.
Claim 3 is 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 20 to 50 gsm, and the claim also recites 20 to 30 gsm which is the narrower statement of the range/limitation. The claim is 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 Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4, and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over England (US 20190116875 A1) in view of Dimmick (US 20200245675 A1, as cited on IDS dated 10/11/2023) and Minzoni (US 20200154758 A1, as cited on IDS dated 10/11/2023).
Regarding claim 1, England discloses a filter assembly (105, Fig. 1, [0020], “a mouthpiece”) comprising:
Three cylindrical filter sections (111, 109, 107, Fig. 1, [0020]) circumscribed by tipping paper (not shown in Figures, [0025], “an outer wrapper”).
A breakable capsule may be embedded in a filter section (109, Fig. 1, [0036]).
England does not explicitly disclose a first inner wrapper having a wet tensile strength of 3N/15mm or greater.
However, Dimmick, directed to a filter (4, “mouthpiece”), discloses:
Two filter sections (4a, 4b,) circumscribed by a plug wrap (9, “first, inner wrapper”) and a tipping paper (5, “second, outer wrapper”, Fig. 2, [0102, 0105]), and;
The plug wrap (“first, inner wrapper”) is a high wet strength plug wrap which helps maintain uniform filter color after flavor capsules are broken ([0060]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify England by providing an inner plug wrapper around the filter sections as taught by Dimmick because both England and Dimmick are directed to aerosol generating articles, England discloses breakable capsules may be embedded in the filter and Dimmick discloses using a high wet strength inner wrapper helps maintain uniform filter color after flavor capsules are broken and this involves applying a known high wet strength inner plug wrap in a similar aerosol generating article to yield predictable results.
Dimmick is silent to the wet tensile strength of the plug wrap (9, “inner, first wrapper”).
However, Minzoni, directed to an aerosol generating article (abstract), discloses:
A paper wrapper circumscribing a mouthpiece, having a wet tensile strength of at least about 5 Newtons per 15 millimetres (claim 1, [0019, 0030]). The range taught by the prior art overlaps with the claimed range and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify England, in view of Dimmick, by providing the plug wrap with a wet tensile strength of at least 5 Newtons/15mm as taught by Minzoni because both England and Minzoni are directed to aerosol generating articles, Dimmick is silent to the wet tensile strength of the plug wrap (9, “inner, first wrapper”), Minzoni teaches a paper wrapper circumcising a mouthpiece of a similar aerosol generating article having a wet tensile strength of at least 5N/15mm, and one having ordinary skill in the art would be motivated to look to similar mouthpiece wrappers for workable ranges of wet tensile strength and this involves applying a known wet tensile strength to a similar paper wrapper in a similar aerosol generating article to yield predictable results.
Regarding claim 2, Minzoni discloses the paper wrapper has a wet tensile strength of at least 5N/15mm and a dry tensile strength of at least 10N/15mm (claims 1-2, [0019, 0030]). The claimed ranges overlap with the ranges taught by the prior art and are therefore considered prima facie obvious.
Regarding claim 4, England discloses standard tipping paper ([0025]). A person having ordinary skill in the art would recognize that standard tipping paper is porous.
Regarding claim 7, England discloses a filter segment (109, second cylindrical section) comprising a body of material formed of cellulose acetate tow material (Fig. 1, [0032-0034]).
Regarding claim 8, England discloses the filter segment (109) is made of an 8Y15 (i.e. 8 denier per filament, 15,000 total denier) grade of filter tow material ([0034]). The denier per filament and total denier taught by the prior art lies within the claimed ranges and is therefore considered prima facie obvious.
Regarding claim 9, England discloses a capsule may be embedded in the cellulose acetate tow material of the filter segment (109, Fig. 1, [0036]).
Regarding claim 10, England discloses a hollow cooling segment (107, “third cylindrical section”, Fig. 1, [0026]).
Regarding claim 11, England discloses the filter segment (109, “second cylindrical section”) is positioned between the mouth end segment (111, “first cylindrical section”) and the cooling segment (107, “third cylindrical section”, Fig. 1, [0026, 0032, 0038]).
Regarding claim 12, England discloses the cooling section (107, “third cylindrical section”) is made of a spirally wound paper tube (“a plurality of paper layers”, [0029]).
Regarding claim 13, Dimmick discloses the plug wrap (9, “first, inner wrapper”) is wrapped around the two filter sections (4a, 4b, Fig. 2, [0102, 0105]). Dimmick is silent to a third cylindrical section / cooling segment. Therefore, the cooling segment (107, “third cylindrical section”) disclosed by England is considered to not be covered by the first inner wrapper.
England discloses a tipping paper that surrounds the filter assembly (105) and extends partially along the length of the smokeable material (103, Fig. 1, [0025]). The filter assembly (105) includes the cooling segment (107, “third cylindrical section”) and therefore the tipping paper/ second outer wrapper is considered to cover the third cylindrical section.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over England (US 20190116875 A1) in view Dimmick (US 20200245675 A1, as cited on IDS dated 10/11/2023) and Minzoni (US 20200154758 A1, as cited on IDS dated 10/11/2023), as applied to claim 1 above, further in view of Butt (US 6676806 B1).
Regarding claim 3, Dimmick and Minzoni disclose a high wet strength wrapper.
Dimmick and Minzoni are silent to the basis weight of the wrapper.
However, Butt, directed to a smoking article (10, Fig. 2, col. 4 lines 44-50), discloses:
A high wet tensile strength plug wrap paper (30) having basis weight of 10-40 gsm (Fig. 2, col. 3 lines 1-11, col. 4 lines 50-56). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify England, in view of Dimmick and Minzoni, by providing the inner plug wrapper with a basis weight of 10-40 gsm as taught by Butt because both England and Butt are directed to aerosol generating articles, Dimmick Minzoni are silent to the basis weight of the plug wrap, Butt teaches a similar plug wrap having basis weight of 10 to 40 gsm, and one having ordinary skill in the art would be motivated to look to similar mouthpiece wrappers for workable ranges of basis weight and this involves applying known basis weight to a similar paper wrapper in a similar aerosol generating article to yield predictable results.
Claims 5-6, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over England (US 20190116875 A1) in view of Dimmick (US 20200245675 A1, as cited on IDS dated 10/11/2023) and Minzoni (US 20200154758 A1, as cited on IDS dated 10/11/2023), as applied to claim 1 above, further in view of Gregg (US 20220378088 A1).
Regarding claims 5 and 6, England discloses a hollow mouth end segment (111, “first cylindrical section”) which may be formed of a spirally wound paper (Fig. 1, [0038, 0040]).
England does not explicitly disclose the mouth end segment (111, “first cylindrical section”) is formed of filamentary tow.
However, Gregg, directed to a hollow mouthpiece (100) for a smoking article (fig. 1, [0123]), discloses:
The mouthpiece comprises a filtering material of cellulose acetate tow having a denier per filament of 7.3 and a total denier of 36,000 ([0021, 0123]). The denier per filament and total denier lie within the claimed ranges and are therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify England, in view of Dimmick and Minzoni, by substituting the mouth end segment with the mouthpiece taught by Gregg, because both England and Gregg are directed to aerosol generating articles, England discloses the mouthpiece may be formed of spirally wound paper but does not require the mouthpiece only be formed of spirally wound paper, Gregg discloses a hollow mouthpiece formed of cellulose acetate tow, and this involves substituting one know mouthpiece element for another in a similar aerosol generating article to yield predictable results.
Regarding claim 14, England discloses a hollow cooling section (107) for providing a temperature differential across the length of the cooling segment (107) to protect the filter from high temperatures, where the cooling segment (107) has a length of at least 15mm ([0027-0028]).
England does explicitly disclose the internal volume of the cavity or the inner diameter of the cooling segment.
However, Gregg, directed to a hollow cooling element (100) for a smoking article (Fig. 1, [0123]), discloses:
A cooling element (100) having at least one channel (104), the channel having a diameter of 2 to 6mm ([0078-0079, 0123]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify England, in view of Dimmick and Minzoni, by providing the cooling segment with an inner diameter of 2-6mm as taught by Gregg, because both England and Gregg are directed to aerosol generating articles, England discloses a cooling segment for cooling the aerosol and protecting the downstream filter but is silent to the inner diameter, Gregg discloses a similar hollow cooling element having an inner diameter of 2-6mm, one having ordinary skill in the art would be motivated to look to similar cooling segments for workable ranges of inner diameter and this involves applying known inner diameter to a similar cooling element in a similar aerosol generating article to yield predictable results.
A mouthpiece comprising a cavity with an internal volume greater than 450 mm3 is interpreted as any cavity (e.g. a hollow cooling element or hollow mouthpiece section) in the mouthpiece having an internal volume greater than 450mm3. England in view of Dimmick, Minzoni, and Gregg, does not explicitly disclose the cooling element (107) has an internal volume of 450 mm3 or greater. However, England discloses the length of the cooling section (107) is at least 15mm and Gregg discloses a hollow cooling element (100) having an inner diameter of 2 to 6mm ([0078-0079, 0123]). Therefore, a person having ordinary skill in the art, in view of the disclosed dimensions, could have reasonably arrived at a cooling element having an internal volume that overlaps with the claimed range and is therefore considered prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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