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 .
Election/Restrictions
Claims 1-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/04/2026.
Applicant's election with traverse of Group II, claims 7-12 in the reply filed on 05/04/2026 is acknowledged. The traversal is on the ground(s) that Applicant’s traversal is noted however after further consideration the restriction is still considered proper in view of the rejection of claim 7 as unpatentable over Zhuang et al. in view of Chida et al. as set for the below.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 8 is objected to because it depends from claim 7, which is directed to a medium receiving rod, while claim 8 is directed to an aerosol-generating device. Therefore, claim 8 does not further limit the subject matter of claim 7.
For the purpose of examination, Claim 8 is being interpreted as the medium receiving rod of claim 7.
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) 7-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhuang et al. (US 2011/0155154) in view of Chida et al. (US 2013/0160779).
Regarding claim 7, Zhuang teaches: a medium receiving rod (filter 104) (¶ [0047]);
a first filter segment disposed at an upstream end of the medium receiving rod (cellulose acetate plug 126 disposed adjacent tobacco rod 102 at the upstream end of filter 104) (¶ [0047]);
a second filter segment disposed downstream of the first filter segment (cellulose acetate plug 122 disposed downstream of plug 126) (¶ [0047]);
the second filter segment including medium pulp (tobacco beads comprising tobacco particles dispersed within plug 122) (¶ [0042]);
a filter member (cellulose acetate plug 122 having tobacco beads dispersed among the fibers of the plug 122) (¶ [0047]).
Zhuang does not expressly teach: a pH adjuster.
Chida teaches: a pH adjuster (at least one pH-adjusting agent selected from the group consisting of potassium carbonate and sodium hydrogencarbonate) (¶ [0014]);
wherein the pH-adjusting agent is incorporated into a tobacco-containing material comprising a ground tobacco material (¶ [0014]);
and wherein potassium carbonate and/or sodium hydrogencarbonate adjust the pH of the tobacco-containing material to the alkali side and facilitate release of tobacco flavor (¶ [0008]).
Zhuang and Chida are in the same field of endeavor because both references are directed to tobacco flavor delivery materials for smoking articles. Zhuang teaches tobacco beads incorporated into a filter segment for releasing tobacco flavor into mainstream smoke (¶ [0043]), while Chida teaches a tobacco-flavor-releasing material and a tobacco flavor inhalator utilizing tobacco-containing flavor-releasing material (¶ [0003]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tobacco bead-containing second filter segment of Zhuang to further include the pH-adjusting agent taught by Chida because Chida teaches that potassium carbonate and/or sodium hydrogencarbonate adjust the pH of tobacco-containing material to the alkali side and facilitate release of tobacco flavor (¶ [0008]). One of ordinary skill in the art would have been motivated to incorporate Chida’s pH-adjusting agent into the tobacco-containing second filter segment of Zhuang to improve release of flavor from the tobacco material and thereby enhance flavor delivery to the user.
Regarding claim 8, Zhuang in view of Chida, as modified above, teaches a second filter segment including medium pulp particles associated with a filter member and incorporated into a wrapped filter segment (Zhuang ¶ [0047]). The recited steps of applying a binder, placing particles on a filter member, folding the filter member, and wrapping the folded filter member are process limitations recited in an article claim and do not impart a structural limitation beyond the resulting tobacco-containing filter segment. Therefore, the prior art teaches the same or substantially the same article.
Regarding claim 9, Zhuang in view of Chida, as modified above, teaches that the pH adjuster comprises an alkaline salt (potassium carbonate, sodium hydrogencarbonate, or a mixture thereof) (Chida ¶ [0021]).
Regarding claim 11, Zhuang teaches that the first filter segment and the second filter segment comprise acetate material (CA plug 126 and CA plug 122, respectively, wherein CA denotes cellulose acetate) (¶ [0047]).
Regarding claim 12, Zhuang teaches that the medium pulp is tobacco pulp (tobacco beads comprising tobacco particles, tobacco dust, tobacco fines, or tobacco powder) (¶ [0005]). Further, Zhuang teaches that the tobacco particles are formed from ground tobacco material (¶ [0060]).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Zhuang et al. (US 2011/0155154)in view of Chida et al. (US 2013/0160779) as applied to claim 7 above, and further in view of Zuber et al. (US 2014/0305448).
Regarding claim 10, Zhuang in view of Chida, as modified above, does not teach a filter rod disposed downstream of the second filter segment and comprising a cooling segment and a mouthpiece segment.
Zuber teaches a filter rod comprising a cooling segment (aerosol-cooling element 40) and a mouthpiece segment (mouthpiece 50) (Fig. 1; ¶ [0178], ¶ [0183]).
Zhuang and Zuber are in the same field of endeavor because both are directed to smoking or aerosol-generating articles having rod and filter structures through which smoke or aerosol passes before inhalation.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the medium receiving rod of Zhuang in view of Chida to include the cooling segment and mouthpiece segment taught by Zuber because Zuber teaches that aerosol-cooling element 40 cools aerosol prior to inhalation and mouthpiece 50 delivers the aerosol to the user (¶ [0182], ¶ [0192]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7, 9, 10 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 10, 11, and 12 of copending Application No. 18/567,844 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because similar medium receiving rod structures are taught such that claim 7 of the instant application corresponds to claim 10 of copending Application No. 18/567,844. Both claims recite a medium receiving rod comprising a first filter segment, a second filter segment, and medium pulp with a pH adjuster disposed within the rod. The difference between the medium pulp and pH adjuster being disposed in the second filter segment of claim 7 and being disposed in a cavity segment between the first filter segment and the second filter segment of claim 10 constitutes an obvious variation that does not render the claims patentably distinct.
Claim 9 of the instant application is the same as claim 11 of copending Application No. 18/567,844, wherein the pH adjuster comprises an alkaline salt.
Claim 10 of the instant application is the same as claim 12 of copending Application No. 18/567,844, wherein the medium receiving rod further comprises a filter rod disposed at a downstream end and comprising a cooling segment and a mouthpiece segment.
Claim 12 of the instant application is the same as claim 4 of copending Application No. 18/567,844, wherein the medium pulp is tobacco pulp.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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