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Claims 16-19, 21-32, 36-37, 39, and 41 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5-21-2026.
Applicant’s election without traverse of group I, corresponding to claims 1-3, 5, 7, 8, 11-13 in the reply filed on 5-21-2026 is acknowledged.
Drawings
The drawings are objected to under 37 CFR 1.84(u)(1): where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear. The sole drawing is numbered as Fig 1. (see also objection to the specification below).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to because the application only includes a single drawing view and the specification refers to that single drawing view as Figure 1. The specification should be amended to refer to the sole drawing view as “the figure” or similar non-numbered terminology.
The disclosure is objected to because of the following informalities:
On page 13 line 35, the specification recites “ISO 534:23011” which appears to be a typographical error.
On page 10 lines 25-26, the specification recites “a comparatively high pressure is used at thein the machine direction first one to three rows of water jets in the machine direction” which appears to include multiple typographical errors.
Appropriate correction is required.
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) 1-3, 5, 7-8, 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards (US 5738119A) submitted by Applicant via IDS on 3-29-2024.
Regarding Claim 1, Edwards teaches filter material for manufacturing a segment for a smoking article (see abstract), wherein
the filter material is hydroentangled (column 2 line 22) and Edwards teaches the material contains at least 50% lyocell fibers (column 2 line 32) and additionally that the hydroentangled fabric may consist solely of, or essentially wholly of lyocell fibers (column 2 lines 22-23) lyocell is solvent spun cellulose (see column 1 lines 52-65) which falls within the claim requirement that the filter material contains at least 50% and at most 100% cellulose fibers, each with respect to the mass of the filter material
the filter material has a basis weight of 20 g/m2 to 80 g/m2 (see column 2 line 37) which overlaps with the claim requirement the filter material has a basis weight at least 15 g/m2 and at most 60 g/m2, in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I)
the thickness of one layer of the filter material is 0.32mm (320 μm) (see table 3, F, various thicknesses are given that fall in the claimed range) which fall within the claimed range of the thickness of one layer of the filter material is at least 25 μm and at most 400 μm.
Although Edwards fails to explicitly disclose the thickness measurement was measured in accordance with ISO 534:2011, Edwards teaches a hydroentangled filter material having substantially the same structure and composition claimed above, including cellulose in the ranges claims and thickness and basis weights in the ranges claimed, the thickness obtained by the claimed standardized test gives the thickness property of the material and is not a separate structural element. Therefore, because the prior art material is substantially identical to the claimed material with the same claimed thickness (thickness that falls in the claimed range), it would be reasonably expected to possess the same or substantially similar thickness properties that meet the claim (see MPEP 2144.09), and wherein
Although Edwards fails to explicitly disclose the filter material has a creep tendency in the thickness direction of at most 10%, wherein the creep tendency is the relative decrease in the thickness of 5 layers of the filter material, measured in accordance with ISO 534:2011, within 20 s after the start of the thickness measurement. Edwards teaches a hydroentangled filter material having substantially the same structure and composition claimed above, including cellulose in the ranges claims and thickness and basis weights in the ranges claimed. Therefore, because the prior art material is substantially identical to the claimed material, it would reasonably be expected to possess the same or substantially similar creep tendency properties that meet the claim (see MPEP 2144.09).
Regarding Claim 2, Edwards teaches the claim limitations as set forth above. Additionally Edwards teaches the cellulose fiber content in the filter is at least 75% lyocell (column 2 line 32) which is solvent spun cellulose (see column 1 lines 52-65), and additionally that the hydroentangled fabric may consist solely of, or essentially wholly of lyocell fibers (column 2 lines 22-23 which overlaps with the claimed range) in which the proportion of cellulose fibers in the filter material is at least 70% and at most 95%, each with respect to the mass of the filter material. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 3, Edwards teaches the claim limitations as set forth above. Additionally, Edwards teaches the cellulose fibers are formed by pulp fibers (e.g., wood pulp cellulose fibers, column 1 line 56-58).
Regarding Claim 5, modified Edwards teaches the claim limitations as set forth above. Additionally, Edwards teaches the hydroentangled fabric may comprise at least 25% by weight lyocell which overlaps with the claimed range the proportion of fibers from regenerated cellulose is at least 5% and at most 50% with respect to the mass of the filter material, in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 7, modified Edwards teaches the claim limitations as set forth above. Additionally, Edwards teaches the filter material has a basis weight of 20 g/m2 to 80 g/m2 (see column 2 line 37) which overlaps with the claim requirement the filter material has a basis weight of at least 20 g/m2 and at most 50 g/m2, in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 8, modified Edwards teaches the claim limitations as set forth above. Additionally, Although Edwards fails to explicitly disclose the filter material has a creep tendency in the thickness direction of at least 1% and at most 5%. Edwards teaches a hydroentangled filter material having substantially the same structure and composition claimed above, including cellulose in the ranges claims and thickness and basis weights in the ranges claimed. Therefore, because the prior art material is substantially identical to the claimed material, it would reasonably be expected to possess the same or substantially similar creep tendency properties that meet the claim (see MPEP 2144.09).
Regarding 13, modified Edwards teaches the claim limitations as set forth above. Additionally, Edwards teaches the thickness of one layer of the filter material is 0.32mm (320 μm) (see table 3, F, various thicknesses are given that fall in the claimed range) which falls within the claimed range of the thickness of one layer of the filter material measured is at least 30 μm and at most 350 μm.
Although Edwards fails to explicitly disclose the thickness measurement was measured in accordance with ISO 534:2011, Edwards teaches a hydroentangled filter material having substantially the same structure and composition claimed above, including cellulose in the ranges claims and thickness and basis weights in the ranges claimed, the thickness obtained by the claimed standardized test gives the thickness property of the material and is not a separate structural element. Therefore, because the prior art material is substantially identical to the claimed material with the same claimed thickness (thickness that falls in the claimed range), it would be reasonably expected to possess the same or substantially similar thickness properties that meet the claim (see MPEP 2144.09).
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards (US 5738119A) submitted by Applicant via IDS on 3-29-2024 in view of Kitaoka (US 20200397040A1) submitted by Applicant via IDS on 11-27-2023.
Regarding Claim 11, modified Edwards teaches the claim limitations as set forth above. However, Edwards fails to explicitly disclose the filter material contains at least one substance selected from the group consisting of triacetin, propylene glycol, sorbitol, glycerol, polyethylene glycol, polypropylene glycol, polyvinyl alcohol and triethyl citrate, or a mixture of two or more of the at least one substance.
However, Kitaoka teaches the filter material contains at least one substance selected from the group consisting of triacetin, propylene glycol, polyethylene glycol, polypropylene glycol, and triethyl citrate, or a mixture of two or more of the at least one substance (see [0050]). Kitaoka also teaches that cellulose filters are biodegradable [0005] but can have worse taste than cellulose acetate, and that taste an be improved by impregnating a cellulose filtration substrate with additives for reducing phenols in aerosol such as triacetin [0007] and furth lists the alternatives that can be used for the same purpose such as propylene glycol, polyethylene glycol, polypropylene glycol, and triethyl citrate [0050].
Therefore it would be obvious to a person of ordinary skill in the art to modify the filtration material of Edwards to include at least one substance selected from the group consisting of triacetin, propylene glycol, sorbitol, glycerol, polyethylene glycol, polypropylene glycol, polyvinyl alcohol and triethyl citrate, to improve the taste by reducing phenols in the aerosol filtrate.
Regarding Claim 12, modified Edwards teaches the claim limitations as set forth above. However, Edwards is silent to suitable filler for use in filters and therefore fails to explicitly disclose in which at least a portion of the cellulose fibers is loaded with a filler, wherein the filler is formed by calcium carbonate particles.
Kitaoka is directed to a similar smoking article filter comprising a cellulose base filtration substrate and teaches a cellulose based filtration substrate for a smoking article filter [0031], and that the filtration substrate may be provided as a sheet like material and formed into a continuous rod by rolling, crimping, corrugating, or folding. [0040] Kitaoka further teaches that at least a portion of the cellulose fibers is loaded with a filler, wherein the filler is formed from/by calcium carbonate material/particles [0042].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention, to modify the lyocell fiber filter of Edwards, to include calcium carbonate filler, as taught by Kitaoka, because both Edwards and Kitaoka are directed to cellulose-based filtration substrates for smoking article filters, Edwards is silent regarding suitable filler materials for such a cellulose based filter material, and one of ordinary skill in the art would have been motivated to look to a similar smoking filter art to identify suitable filler materials for a similar cellulose based filter substrate. Kitaoka teaches calcium carbonate as a known filler material for a similar filter substrate, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755
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