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
Claims 1, 4 and 6 are amended. Claims 2 and 3 are cancelled. Claim 13 is newly added. Claims 1, 4-9 and 13 are presently examined.
Applicant’s arguments regarding the rejection under 35 USC 112(b) have been fully considered and are persuasive. The rejection of 5/19/2026 is overcome.
Claim Interpretation
Regarding claim 1, the claim recites the limitation of 70% to 100% of the length of the medium accommodation portion being wrapped with a heater is considered to be a limitation regarding the intended use of the claimed article since the heater is not part of the article. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required an article that could be accommodated within a heater of the claimed relative size.
Regarding claim 6, the claim recites the limitation “the nicotine-containing media are prepared comprise a mixture of cut tobacco and cut pieces of a reconstituted tobacco sheet,” which is considered to be a limitation regarding the method by which the claimed nicotine containing media is made. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113 I. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required the nicotine containing media to be a mixture of pieces of tobacco leaves and pieces of reconstituted tobacco sheet that have been formed by any method.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-5, 7-9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jeong (WO 2020/153829, English language equivalent US 2022/0175015 relied upon).
Regarding claims 1 and 13, Jeong discloses an electrically heated smoking article having a tobacco filler section (figure 2, reference numeral 58), which is considered to meet the claim limitation of a medium accommodation portion, a gel aerosol forming substrate cartridge that contains a liquid composition as an aerosol forming substrate (figure 2, reference numeral 56), which is considered to meet the claim limitation of a moisturizer accommodation portion, a paper tube that provides an aerosol passage in the form of a central cavity (figure 2, reference numeral 54), which is considered to meet the claim limitation of a first filter portion, and a filter functioning as a mouthpiece ([0052], figure 2, reference numeral 52), which is considered to meet the claim limitation of a second filter portion. The relative position of the tobacco filler and the liquid containing cartridge may be reversed [0052], indicating that the tobacco portion is disposed between the filter and the liquid containing cartridge. The tobacco of the tobacco filler section is considered to be a nicotine containing media since there is no disclosure that the naturally occurring tobacco has been removed. The filter is made up of pulp [0080], which is considered to meet the claim limitation of a filtration material. It is evident that a suitably sized heater could wrap the claimed amount of the medium accommodation portion since Jeong does not explicitly disclose relative lengths of the tobacco filler section and the gel aerosol forming substrate. Jeong does not explicitly disclose the claimed lengths.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the tobacco filler section and the gel aerosol forming substrate have the claimed relative lengths. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 4, modified Jeong teaches all the claim limitations as set forth above. Jeong additionally discloses that the relative lengths of the components can be changed to produce different aerosols for a user [0094]. Modified Jeong does not explicitly teach the claimed lengths.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the article having claimed length. One would have been motivated to do since Jeong discloses that the relative lengths of each section of the article can be changed to control aerosol features. The courts have held that, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See MPEP § 2144.05 II.
Regarding claim 5, Jeong discloses that the cartridge contains glycerin to generate an aerosol upon heating [0059].
Regarding claim 7, Jeong discloses the tobacco filler comprises tobacco strands arranged in arranged in the same direction [0075].
Regarding claim 8, Jeong discloses that the tobacco filler and cartridge are wrapped with a third wrapping paper [0082], which is considered to meet the claim limitation of a segment wrapper.
Regarding claim 9, Jeong discloses that the whole article is wrapped by a fourth wrapping paper around the third wrapping paper ([0082], figure 2, reference numeral 60), which is considered to meet the claim limitation of total wrapper.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jeong (WO 2020/153829, English language equivalent US 2022/0175015 relied upon) in view of Hwang (WO 2020/009415, English language equivalent US 2021/0259303 relied upon).
Regarding claim 6, modified Jeong teaches all the claim limitations as set forth above. Modified Jeong does not explicitly teach the tobacco filler being a mixture of pieces of tobacco leaf and pieces of reconstituted tobacco.
Hwang teaches a cigarette made from a tobacco rod having first and second smoking material portions (abstract) that are made from pieces of tobacco leaves and ground reconstituted tobacco [0040]. Hwang additionally teaches that this arrangement allows a smoker to taste various tobacco flavors in one smoking article [0006].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the tobacco material of Hwang as the tobacco filler of Jeong. One would have been motivated to do so since Hwang a tobacco mixture that allows a smoker to taste various tobacco flavors in one smoking article.
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 1, 4-5, 7-9 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/275,852 (hereafter referred to as Seo ‘852).
Regarding claims 1, 4 and 13, Seo ‘852 claims a smoking article comprising a medium accommodation portion comprising a cigarette column portion filled with cut tobacco leaves, which is considered to meet the claim limitation of a medium accommodation portion, a moisturizer accommodation portion disposed on one side of the medium accommodation portion and comprising an aerosol generating material, a filter portion disposed on another side of the medium accommodation portion, wherein the filter portion comprises a first filter portion comprising a cavity therein, and a second filter portion filled with a filtration material, and an entirety of the length of the cigarette column portion is heated by a heater (claim 1). The length of the first filter portion is 12 mm (claim 7), and the length of the cigarette column portion is 6 mm (claim 3). Seo ‘852 does not explicitly claim the claimed lengths.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the various components have the claimed lengths. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 5, Seo ‘852 claims the aerosol generating material being glycerin (claim 6).
Regarding claim 7, Seo ‘852 claims the cut tobacco leaves being arranged in a same direction (claim 5).
Regarding claim 8, Seo ‘852 claims at least one of the segments is wrapped with a segment wrapper (claim 8).
Regarding claim 9, Seo ‘852 claims multiple segments being wrapped with the segment wrapper, and the segment wrapper being wrapped with a total wrapper (claim 9).
Claims 1, 4-5, 8-9 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/287,414 (hereafter referred to as Seo ‘414).
Regarding claims 1, 4 and 13, Seo ‘414 claims a smoking article comprising a medium accommodation portion, a moisturizing accommodation portion disposed on one side of the medium accommodation portion and comprising an aerosol generating material, and a filter portion disposed on another side of the medium accommodation portion (claim 1). The medium accommodation portion is filled with a plurality of tobacco sheets (claim 7), which is considered to meet the claim limitation of nicotine-containing media. It is evident that a suitably sized heater could wrap the claimed amount of the medium accommodation portion since Jeong does not explicitly disclose relative lengths of the tobacco filler section and the gel aerosol forming substrate. The filter portion comprises a first filter portion comprising a cavity therein, and a second filter portion filled with a filtration material (claim 9). Seo ‘414 does not explicitly claim the claimed lengths.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the various components have the claimed lengths. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 5, Seo ‘414 claims the aerosol generating material comprising glycerin (claim 8).
Regarding claim 8, Seo ‘414 claims a segment wrapper that wraps the moisturizer accommodation portion (claim 10).
Regarding claim 9, Seo ‘414 claims the segment wrapper wrapping both the filter portion and the moisturizer accommodation portion, and being wrapped in turn with a total wrapper (claim 10).
Claims 1, 4-5, 7-9 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/287,929 (hereafter referred to as Seo ‘929).
Regarding claims 1, 4 and 13, Seo ‘929 claims a smoking article comprising a medium accommodation portion filled with cut tobacco leaves, which are considered to meet the claim limitation of nicotine containing media, a moisturizer accommodation portion disposed on one side of the medium accommodation portion and comprising an aerosol generating material, and a filter portion disposed on another side of the medium accommodation portion (claim 1). The first filter portion comprises a cavity, and the second filter portion is filled with a filtration material (claim 8). It is evident that a suitably sized heater could wrap the claimed amount of the medium accommodation portion since Jeong does not explicitly disclose relative lengths of the tobacco filler section and the gel aerosol forming substrate. Seo ‘929 does not explicitly claim the claimed lengths.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the various components have the claimed lengths. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 5, Seo ‘929 claims the aerosol generating material comprising glycerin (claim 6).
Regarding claim 7, Seo ‘929 claims the cut tobacco leaves are arranged in a same direction (claim 5).
Regarding claim 8, Seo ‘929 claims at least one of the portions being wrapped with a segment wrapper (claim 9).
Regarding claim 9, Seo ‘929 claims a plurality of the portions being wrapped with a segment wrapper, which is then wrapped with a total wrapper (claim 12).
Claims 1, 4-5, 7-9 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/289,616 (hereafter referred to as Seo ‘616).
Regarding claims 1, 4 and 13, Seo ‘616 claims a smoking article comprising a medium accommodation portion filled with a plurality of tobacco sheets, which are considered to meet the claim limitation of nicotine-containing media, a moisturizers accommodation portion disposed on one side of the medium accommodation portion and comprising an aerosol generating material, and a filter disposed on another side of the medium accommodation portion (claim 1). The filter portion comprises a first filter portion comprising a cavity, and a second filter portion filled with a filtration material (claim 9). It is evident that a suitably sized heater could wrap the claimed amount of the medium accommodation portion since Jeong does not explicitly disclose relative lengths of the tobacco filler section and the gel aerosol forming substrate. Seo ‘616 does not explicitly claim the claimed lengths.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the various components have the claimed lengths. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 5, Seo ‘616 claims the aerosol generating material comprising glycerin (claim 8).
Regarding claim 8, Seo ‘616 claims the medium accommodation portion being wrapped with a segment wrapper (claim 10).
Regarding claim 9, Seo ‘616 claims the segment wrapper wrapping both the medium accommodation portion and the moisturizer accommodation portion, and being wrapped with a total wrapper in turn (claim 11).
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Response to Amendment
Regarding claim interpretation, applicant’s arguments have been fully considered but they are not persuasive. The indicated language has not been removed from claim 1 as alleged by applicant, and claim 6 is still subject to a product-by-process interpretation since it is unclear what distinguishes tobacco formed by cutting from tobacco formed by other methods. The interpretations are therefore maintained.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues that the claimed dimensions of the smoking article produce unexpected results. However, the data provided by applicant compares the claimed invention to a “Control group” rather than the closest prior art (in this case Jeong) as required by MPEP § 716.02(b) III and MPEP § 716.02(e). The dimensions of the Control group are very different from the dimensions of either the examples or the ranges of Jeong. It is also unclear as to whether the limitation “wherein 70% to 1005 of the length of the medium accommodation portion is wrapped with a heater” is required to be commensurate in scope with the results shown in the specification. If so it may not be possible for such a limitation to be effective in an article claim, a system claim may be required. Finally, Table 1 of applicant’s specification indicates various lengths of various segments of the tested articles but does not clearly indicate which segments have which lengths. One of ordinary skill in the art would therefore not be able to derive suitable lengths for each of the segments from Table 1, since Table 1 does not clearly indicate which segments have which lengths. The rejections of all examined claims are therefore maintained since applicant has not shown claim 1 to be allowable.
Regarding the double patenting rejections, applicant’s arguments have been fully considered but they are not persuasive since applicant has not made a persuasive showing of unexpected results for the reasons set forth above with respect to the rejections under 35 USC 103.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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