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 1, 3, and 4 are amended. Claims 15-20 are withdrawn from consideration for being directed to a non-elected invention.
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.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 07/16/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pg. 6-7, filed 07/16/2026, with respect to the rejection of claim 3 under 35 U.S.C. 112(b) have been fully considered and are persuasive. Applicant has amended claim 3 to remove the narrow range that falls within the broad range. Accordingly, the rejection of claim 3 under 35 U.S.C. 112(b) has been withdrawn.
Applicant’s arguments, see pg. 7-10, filed 07/16/2026, with respect to the rejection claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claim 1 to require, “wherein the second outer wrapper is a porous wrapper” which was previously presented in claim 4, and “wherein the porous wrapper has a permeability of at least about 2000 Coresta Units”, which was not previously presented. It is noted that while claim 4 recited permeability of the second wrapper, the limitation was optional in previously presented claim 4. England discloses a standard tipping paper (“second outer wrapper”, [0025]) but is silent to the permeability of the tipping paper. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of a combination of previously applied and newly found prior art.
Therefore, the rejections below have been maintained modified based on Applicant’s amendment.
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), Minzoni (US 20200154758 A1, as cited on IDS dated 10/11/2023), and Chida (US 20240041105 A1).
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 standard tipping paper (not shown in Figures, [0025], “an outer wrapper”).
A breakable capsule may be embedded in a filter section (109, Fig. 1, [0036]).
A person having ordinary skill in the art would recognize that standard tipping paper is porous.
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.
England is silent to the permeability of the tipping paper (“second outer wrapper”).
However, Chida, directed to a cigarette (10, Fig. 1, [0088]), discloses:
A tipping paper (15) wrapped around a mouthpiece (14), where the permeability of the tipping paper (15) is 0 to 30,000 Coresta Units (Fig. 1, [0088, 0171]). The range taught by the prior art overlaps with the claimed range and therefore the claimed range is 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 tipping paper with a permeability of 0 to 30,000 Coresta Units as taught by Chida because both England and Chida are directed to aerosol generating articles, England discloses a tipping paper but is silent to the permeability of the tipping paper, Chida teaches a tipping paper having a permeability of 0 to 30,000 Coresta Units, and one having ordinary skill in the art would be motivated to look to similar tipping papers for workable ranges of permeability and this involves applying a known permeability to a similar tipping paper 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, Chida discloses the permeability of the tipping paper (15) is 0 to 30,000 coresta units (Fig. 1, [0088, 0171]). The range taught by the prior art overlaps with the claimed range and therefore the claim range is considered prima facie obvious.
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), Minzoni (US 20200154758 A1, as cited on IDS dated 10/11/2023), and Chida (US 20240041105 A1) 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, Minzoni, and Chida 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), Minzoni (US 20200154758 A1, as cited on IDS dated 10/11/2023), and Chida (US 20240041105 A1), 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
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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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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