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 .
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.
Response to Amendment
Claims 1, 3, and 10 are amended. Claims 2 and 11 are cancelled. Claims 15-17 are newly added.
Response to Arguments
Applicant's claim amendments and remarks filed July 7, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., generating a vortex) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues the cited references, taken individually or in any combination thereof, fail to disclose or suggest each and every feature of claim 1 and argues similarly for claim 10. The Examiner respectfully disagrees as the claim amendments are addressed with the cited prior art as discussed in the rejections below.
Applicant traverses the double patenting rejection citing the Reference Application has a patent term filing date later than the present Application and cites MPEP § 804 to support Applicant’s reasoning the double patenting rejection should be withdrawn, Remarks page 10. The applicant’s remarks are not persuasive as the double patenting rejection is not the only rejection remaining in the present application with the earlier patent term filing date as shown in the rejections discussed below. Therefore, the double patenting rejection is maintained by the Examiner in this final Action.
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.
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.
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, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Hwang et al. (WO 2020/009416 A1, US 2021/0227876 A1 relied upon), and in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025).
Regarding claims 1 and 4, Han discloses an aerosol generating device (Fig. 1A, aerosol generating apparatus 100, [0030]) comprising:
a receiver (Fig. 1A, cigarette inserter 110, [0031]) for receiving a medium receiving rod in a replaceable manner (Fig. 1A, cigarette 10 is inserted into a space, [0032]);
an atomizer (Fig. 1A, vaporizer 120, [0033]) that generates aerosol; and
a power supply (Fig. 1A, battery 140, [0039]) for providing power required to heat the atomizer,
wherein a medium included in the medium receiving rod is transferred by the aerosol passing through the medium receiving rod. (Fig. 1A, The cigarette 10 may have a shape in which tobacco raw materials are wrapped in a heat conductive material ([0032]). The vaporizer 120 may heat a liquid composition to generate aerosol and may discharge the generated aerosol through the inserted cigarette 10 such that the generated aerosol passes through the cigarette 10 inserted into the cigarette inserter 110. Therefore, a tobacco flavor may be added to the aerosol that passed through the cigarette 10, and a user may inhale one end of the cigarette 10 by the mouth to inhale the tobacco-flavored aerosol [0033]);
wherein the medium receiving rod (Figs. 8A and 8B, cigarette 10, [0097]-[0098]), for an aerosol-generating device, comprises:
a first filter segment (Fig. 8A, first filter segment 810, [0098];
a second filter segment (Fig. 8A, second filter segment 830, [0098]);
a cavity segment (Fig. 8A, tobacco rod 820, [0114]) disposed between the first filter segment and the second filter segment, and comprising medium pulp (tobacco raw material composed of granules, and a pH adjuster (Fig. 8A, hydrogen exponent (pH) such that the tobacco rod 820 has alkalinity, [0104]). The granules composed of the tobacco raw material may be filled in a cavity of the tobacco rod 820 [0103]); therefore, one of ordinary skill in the art would recognize the tobacco rod 820 is a cavity segment as claimed. This reads over first and second filter segments, the cavity segment, and the alkaline pH adjuster of Claim 1.
Han discloses aerosol generated by the vaporizer 120 passes through the cigarette 10 and is passed to a user inhaling one end of the cigarette 10 (Fig. 1A, [0033]). However, Han does not explicitly disclose the upstream end or the downstream end of the cigarette 10.
Hwang, in the field of cigarettes, teaches the term “upstream” indicates the part where external air flows into a cigarette when a user inhales air by using the cigarette, and the term “downstream” indicates the part where air (reads on aerosol) in the cigarette flows out to the outside when a user inhales on a cigarette. The terms “upstream” and “downstream” are used to indicate a relative position between segments configuring a cigarette ([0017]). Hwang further teaches the cigarette 2 may have a shape similar to a general combustion type cigarette. For example, the cigarette 2 may be divided into a first portion 140 including an aerosol generating material and a second portion 150 including a filter, and so on (Fig. 1, [0022]). A user may inhale an aerosol while biting the second portion 150. As such, the aerosol is generated as external air passes through the first portion 140, and the generated aerosol passes through the second portion 150 to be delivered to the mouth of the user ([0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that a skilled person, when comparing the cigarette 10 in Han Fig. 8A to the cigarette 2 in Fig. 1 of Hwang, would be reasonably suggested the end of the cigarette 10 wherein aerosol enters the cigarette 10 from the vaporizer is the upstream end and the end of the cigarette 10 where the aerosol exits the cigarette 10 is the downstream end as taught by Hwang, which results in the
a first filter segment 810 disposed at an upstream end of the medium receiving rod (annotated Fig. 8A below);
a second filter 830 segment disposed downstream of the first filter segment (annotated Fig. 8A below);
a filter rod disposed at a downstream end of the medium receiving rod (annotated Fig. 8A above, third filter segment 840, [0098]);
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Han does not explicitly disclose the medium is a form of medium pulp.
Gage, in the field of smoking articles, teaches a smoking article 10 that may have the overall size, shape and general appearance of a filtered cigarette. The smoking article 10 includes an aerosol generating segment 65 that may include at least one aerosol generating cartridge 68 (Fig. 1, [0020]). The aerosol generating cartridge 68 includes an enclosure 100 configured to receive an aerosol precursor therein (Fig. 1, [0037]); the aerosol precursor may include a carrier 110 ([0046]). The carrier 110 may be comprised of cast sheets including a tobacco material, the cast sheets can be formed in a process whereby a selected tobacco containing mixture is cast, dried, and cut into strips or shredded (0050]). In an example, the selected tobacco containing mixture may be characterized as a tobacco containing reconstituted material comprising (on a dry weight basis) about 51.8% tobacco pulp, about 4.2% wood pulp, about 22.0% concentrated tobacco extract, and about 22.0% glycerin and flavorings ([0052]). The components of the aerosol forming agent portion of the aerosol precursor, optionally bound by a carrier 110, are configured to provide aerosols upon heating. The aerosol forming agent components can be vaporized, aerosolized or entrained in air drawn through the smoking article during use. The tobacco containing reconstituted material reads over the limitation of medium pulp of claim 1 and reads over the medium is provided in a form of tobacco pulp of claim 4.
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 rod of Han to include tobacco containing reconstituted material strip or shredded form and containing a ratio, on dry weight basis, of tobacco pulp, wood pulp, concentrated tobacco extract, and glycerin as taught by Gage which will provide aerosols upon heating when air is drawn through the smoking article during use.
Han additionally discloses a filter rod disposed at a downstream end of the medium receiving rod (annotated Fig. 8A above, third filter segment 840, [0098]), (reading over the filter rod) wherein the third filter segment 840 may be configured as a tube filter having a hollow therein ([0114]); which reads over a mouthpiece segment as the user inhales at one end of cigarette 10 as discussed above. Han further discloses one of ordinary skill in the art would understand that various changes in form and details may be made therein without departing from the spirit and scope of the present disclosure as defined by the appended claims ([0121]).
Regarding the claim 1 limitation the cavity segment comprises empty space aside from the medium pulp, Han discloses the filling rate of the tobacco raw material in the tobacco rod 820 may be 30 to 100% ([0103]). Therefore, one of ordinary skill would be reasonably suggested the tobacco road 820 cavity of Han comprises an empty space when the filling is greater than or equal to 30% and less than or equal to 99.9%. Applicant does not provide any evidence to suggest otherwise. This reads over the empty space limitation of claim 1.
Han does not explicitly disclose the medium pulp density.
Gage further teaches in other instances, the carrier 110 can be comprised of a mixture of formed tobacco pellets (Fig. 1, [0046]). The tobacco pellets may at least partially fill a substrate cavity of a smoking of a smoking article. The mass of the tobacco pellets within the enclosure 100 may range from about 200 mg to about 500 mg and can be employed to so as to fill the enclosure 100 at a packing density of about 100 to about 400 mg/cm3 (about 0.1 g/ cm3 to about 0.4 g/cm3) ([0047]). Therefore, the prior art density range is completely encompassed by the claimed density range. This reads over the claimed density of claim 1.
Claim 1 recites the functional language: “for receiving a medium receiving rod in a replaceable manner”. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). (see MPEP § 2144).
This reads over Claim 1.
Regarding claim 5, the recitation of "manufactured by a compression granulation process" ([59]) is a product by process limitation. 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 In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Therefore, for the purposes of this Office action, the term "tobacco pulp" will be interpreted as tobacco containing reconstituted material (see claim 4 rejection above).
Regarding claim 7, Han discloses the atomizer comprises:
a liquid storage tank (Fig. 2, liquid storage unit 122, [0049], [0050]) for storing a liquid composition that generates the aerosol;
a liquid transfer means (Fig. 2, liquid transfer means 124, [0049], [0052]) may transfer the liquid composition of the liquid storage unit to the heating element; an
a heater (Fig. 2, heating element 126, [0049], [0053]) for heating the liquid composition.
This reads over Claim 7.
Regarding claim 8, Han discloses the liquid composition of the atomizer further comprises a flavoring agent (flavor agents, [0051]). This reads over Claim 8.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Hwang et al. (WO 2020/009416 A1, US 2021/0227876 A1 relied upon), and in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025) as applied to claim 1 above, and further in view of Cao et al. (US 2020/0229487 A1).
Regarding claim 3, modified Han discloses all the claim limitations as set forth above, specifically modified Han teaches the mouthpiece segment as discussed in the rejection of claim 1 above. Modified Han does not explicitly disclose a filter rod comprising a cooling segment and a mouthpiece segment.
Cao, in the field of heat-not-burn smoking articles, teaches an integrally-formed heat-not-burn smoking article, wherein the smoking article comprises four or more different unit sections comprising a filter unit 1 (reads over a filter rod), a gel cooling aroma-carrying unit 2, a hollow special particle unit 3, a blocking sheet 4, a cavity unit 5, a hollow supporting unit 6, and a smoking unit 7 (Fig. 1, [0044]). The filter unit 1 is a mouth rod 1 formed by sequentially wrapping a hollow section 11, a cooling section 12 and a filter section 13 with a piece of forming paper 14, wherein the hollow section is positioned proximal to the smoking section, i.e., close to the smoking unit end; the cooling section is connected to the hollow section for flow guide; and the filter section is connected to the cooling section. The cooling unit can significantly reduce the temperature of the smoke, reduce a burning, hot and spicy feeling caused by the smoke entering the oral cavity, and improve the feeling of a smoking experience ([0068]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in modified Han a filter unit cooling section as taught by Cao positioned in between the second filter section 830 and the third filter section 840 of Han (the mouthpiece segment of modified Han). Making such modification can significantly reduce the temperature of the smoke, reduce a burning, hot and spicy feeling caused by the smoke entering the oral cavity, and improve the feeling of a smoking experience.
One of ordinary skill in the art would have a reasonable expectation of success in said modification because Han is open to various changes in form and details that may be made therein without departing from the spirit and scope of the disclosure of Han as discussed in the rejection of claim 1 above. This reads over the filter rod limitation of Claim 3.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025) as applied to claim 1 above, and further in view of Chen (US 2021/0112852 A1).
Regarding claim 6, modified Han discloses all the limitations as set forth above but does not explicitly disclose a disposable cigarette.
Chen, in the field of aerosol-generating articles, teaches an aerosol-generating article refers to a product, e.g., a cigarette, a cartridge, or a smoking stick, containing a smoking material and being capable of generating an aerosol, e.g., smoke or mist, by heating. In an embodiment, the aerosol-generating article is a disposable product ([0027]). Chen further teaches the heated aerosol-generating article may be a consumable that may be consumed by coupling or engaging with an aerosol-generating device, and may be an electrically-operating aerosol-generating device and the aerosol-generating article may be removably coupled with the aerosol-generating device. The article may be used once or twice and then disposed of ([0183]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the cigarette of modified Han be a disposable cigarette that is used once or twice with an aerosol-generating device and then disposed of as taught by Chen. This reads over Claim 6.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Hwang et al. (WO 2020/009416 A1, US 2021/0227876 A1 relied upon), and in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025) as applied to claim 7 above, and further in view of Taurino (US 2021/0392956 A1).
Regarding claim 9, modified Han discloses all the claim limitations as set forth above, specifically heater 126 may be an element for heating the liquid composition to generate aerosol (see claim 7 rejection). However, modified Han does not explicitly disclose a heating temperature of the heater is 270o C or less (Claim 9) or the heating temperature of the heater is 200o C or less (Claim 16)
Taurino, in the same field, teaches an aerosol generation device heating an aerosol-forming substrate comprising a liquid mixture ([0007], [0009], [0013], [0022]), wherein the temperature of the heating element or the aerosol-forming substrate is between 150 and 200o C ([0024]-[0025]). Therefore, the prior art temperature range is completely encompassed by the claimed temperature range of claim 9.
Taurino further teaches the liquid mixture may comprise glycerol (also referred to as glycerine) as an aerosol former ([0018], [0046]). Han discloses the liquid composition may also include glycerin and propylene glycol. Therefore, one of ordinary skill in the art would be motivated to select the heating temperature range taught by Taurino since Taurino teaches a similar aerosol former as contained in the liquid composition of modified Han. This reads over claim 9.
Regarding claim 17, modified Han discloses the vaporizer 120 may heat a liquid composition to generate aerosol and may discharge the generated aerosol through the inserted cigarette 10 such that the generated aerosol passes through the cigarette 10 inserted into the cigarette inserter 110. Therefore, a tobacco flavor may be added to the aerosol that passed through the cigarette 10, and a user may inhale one end of the cigarette 10 by the mouth to inhale the tobacco-flavored aerosol (Han [0033]). According to an embodiment, the cigarette inserter 110 may not include the heater module for heating the inserted cigarette 10. In this case, the tobacco flavor may be added to the aerosol generated by the vaporizer 120 even though the aerosol passes through the non-heated cigarette 10, particularly the taste-controlled cigarette 10 may discharge a tobacco flavor ingredient by contact with the aerosol (reads over aerosolized by indirect heat). Thus the user may inhale (reads over a user puff) tobacco-flavored aerosol from the non-heated cigarette 10 (reads over transferred by the aerosol passing through the medium receiving rod) (Han [0035]). Further modified Han teaches a tobacco containing reconstituted material (i.e., the medium pulp of modified Han) as discussed in the rejection of claim 1 above and further teaches nicotine is a volatile component of tobacco (Gage [0058]).
Therefore, one of ordinary skill in the art before the effective filing date of the claimed invention is reasonably suggested nicotine included in the tobacco containing reconstituted material in modified Han is volatilized (reads over aerosolized) by contact with the aerosol generated by the vaporizer 120 as the aerosol passes through the modified non-heated cigarette 10 as nicotine is a volatile component of tobacco (Gage [0058]). This reads over claim 17.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1), in view of Hwang et al. (WO 2020/009416 A1, US 2021/0227876 A1 relied upon), in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025), and in view of Cao et al. (US 2020/0229487 A1).
Regarding claim 10, Han discloses a medium receiving rod (Figs. 8A and 8B, cigarette 10, [0097]-[0098]), for an aerosol-generating device, comprising,
a first filter segment (Fig. 8A, first filter segment 810, [0098];,
a second filter segment (Fig. 8A, second filter segment 830, [0098]);
a cavity segment (Fig. 8A, tobacco rod 820, [0114]) disposed between the first filter segment and the second filter segment, and comprising medium pulp (tobacco raw material composed of granules [0103]), and a pH adjuster (Fig. 8A, hydrogen exponent (pH) such that the tobacco rod 820 has alkalinity, [0104]), wherein the pH adjuster comprises an alkaline salt (In an embodiment, a taste control agent may be added to the tobacco raw material. In addition, because the tobacco rod 820 may include granules composed of the taste control agent, the tobacco rod 820 may include granules composed of the tobacco raw material and granules composed of the taste control agent. Examples of the taste control agent may include calcium carbonate, sodium bicarbonate, calcium oxide, etc. [0104]). Applicant’s specification discloses an alkaline salt may be potassium carbonate, sodium hydrogen carbonate, calcium oxide, or the like ([59]). This reads over the alkaline salt of claim 10.
Han discloses the granules composed of the tobacco raw material may be filled in a cavity of the tobacco rod 820 (0103]); therefore, one of ordinary skill in the art would recognize the tobacco rod 820 is a cavity segment. This reads over the first and second filter segments and the cavity segment of claim 10.
Han discloses aerosol generated by the vaporizer 120 passes through the cigarette 10 and is passed to a user inhaling one end of the cigarette 10 (Fig. 1A, [0033]). However, Han does not explicitly disclose the upstream end or the downstream end of the cigarette 10.
Hwang, in the field of cigarettes, teaches the term “upstream” indicates the part where external air flows into a cigarette when a user inhales air by using the cigarette, and the term “downstream” indicates the part where air (reads on aerosol) in the cigarette flows out to the outside when a user inhales on a cigarette. The terms “upstream” and “downstream” are used to indicate a relative position between segments configuring a cigarette ([0017]). Hwang further teaches the cigarette 2 may have a shape similar to a general combustion type cigarette. For example, the cigarette 2 may be divided into a first portion 140 including an aerosol generating material and a second portion 150 including a filter, and so on (Fig. 1, [0022]). A user may inhale an aerosol while biting the second portion 150. As such, the aerosol is generated as external air passes through the first portion 140, and the generated aerosol passes through the second portion 150 to be delivered to the mouth of the user ([0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that a skilled person, when comparing the cigarette 10 in Han Fig. 8A to the cigarette 2 in Fig. 1 of Hwang, would be reasonably suggested the end of the cigarette 10 wherein aerosol enters the cigarette 10 from the vaporizer is the upstream end and the end of the cigarette 10 where the aerosol exits the cigarette 10 is the downstream end as taught by Hwang, which results in the
a first filter segment 810 disposed at an upstream end of the medium receiving rod (annotated Fig. 8A below);
a second filter 830 segment disposed downstream of the first filter segment (annotated Fig. 8A below);
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Han does not explicitly disclose the medium is a form of medium pulp.
Gage, in the field of smoking articles, teaches a smoking article 10 that may have the overall size, shape and general appearance of a filtered cigarette. The smoking article 10 includes an aerosol generating segment 65 that may include at least one aerosol generating cartridge 68 (Fig. 1, [0020]). The aerosol generating cartridge 68 includes an enclosure 100 configured to receive an aerosol precursor therein (Fig. 1, [0037]); the aerosol precursor may include a carrier 110 ([0046]). The carrier 110 may be comprised of cast sheets including a tobacco material, the cast sheets can be formed in a process whereby a selected tobacco containing mixture is cast, dried, and cut into strips or shredded (0050]). In an example, the selected tobacco containing mixture may be characterized as a tobacco containing reconstituted material comprising (on a dry weight basis) about 51.8% tobacco pulp, about 4.2% wood pulp, about 22.0% concentrated tobacco extract, and about 22.0% glycerin and flavorings ([0052]). The components of the aerosol forming agent portion of the aerosol precursor, optionally bound by a carrier 110, are configured to provide aerosols upon heating. The aerosol forming agent components can be vaporized, aerosolized or entrained in air drawn through the smoking article during use. The tobacco containing reconstituted material reads over the limitation of medium pulp of claim 10.
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 rod of Han to include tobacco containing reconstituted material strip or shredded form and containing a ratio, on dry weight basis, of tobacco pulp, wood pulp, concentrated tobacco extract, and glycerin as taught by Gage which will provide aerosols upon heating when air is drawn through the smoking article during use.
Regarding the claim 10 limitation the cavity segment comprises empty space aside from the medium pulp, Han discloses the filling rate of the tobacco raw material in the tobacco rod 820 may be 30 to 100% ([0103]). Therefore, one of ordinary skill would be reasonably suggested the tobacco road 820 cavity of Han comprises an empty space when the filling is greater than or equal to 30% and less than or equal to 99.9%. Applicant does not provide any evidence to suggest otherwise. This reads over the empty space limitation of claim 10.
Han does not explicitly disclose the medium pulp density.
Gage further teaches in other instances, the carrier 110 can be comprised of a mixture of formed tobacco pellets (Fig. 1, [0046]). The tobacco pellets may at least partially fill a substrate cavity of a smoking of a smoking article. The mass of the tobacco pellets within the enclosure 100 may range from about 200 mg to about 500 mg and can be employed to so as to fill the enclosure 100 at a packing density of about 100 to about 400 mg/cm3 (about 0.1 g/ cm3 to about 0.4 g/cm3) ([0047]). Therefore, the prior art density range is completely encompassed by the claimed density range. This reads over the claimed density of claim 10.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Hwang et al. (WO 2020/009416 A1, US 2021/0227876 A1 relied upon), and in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025) as applied to claim 10 above, and further in view of Cao et al. (US 2020/0229487 A1).
Regarding claim 12, modified Han discloses all the limitations as shown above and additionally discloses a filter rod disposed at a downstream end of the medium receiving rod (annotated Fig. 8A above, third filter segment 840, [0098]), wherein the third filter segment 840 may be configured as a tube filter having a hollow therein ([0114]); which reads over a mouthpiece segment as the user inhales at one end of cigarette 10 as discussed above. Han further discloses one of ordinary skill in the art would understand that various changes in form and details may be made therein without departing from the spirit and scope of the present disclosure as defined by the appended claims ([0121]).
Modified Han does not explicitly disclose a filter rod comprising a cooling segment and a mouthpiece segment.
Cao, in the field of heat-not-burn smoking articles, teaches an integrally-formed heat-not-burn smoking article, wherein the smoking article comprises four or more different unit sections comprising a filter unit 1 (reads over a filter rod), a gel cooling aroma-carrying unit 2, a hollow special particle unit 3, a blocking sheet 4, a cavity unit 5, a hollow supporting unit 6, and a smoking unit 7 (Fig. 1, [0044]). The filter unit 1 is a mouth rod 1 formed by sequentially wrapping a hollow section 11, a cooling section 12 and a filter section 13 with a piece of forming paper 14, wherein the hollow section is positioned proximal to the smoking section, i.e., close to the smoking unit end; the cooling section is connected to the hollow section for flow guide; and the filter section is connected to the cooling section. The cooling unit can significantly reduce the temperature of the smoke, reduce a burning, hot and spicy feeling caused by the smoke entering the oral cavity, and improve the feeling of a smoking experience ([0068]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include in modified Han a filter unit cooling section as taught by Cao positioned in between the second filter section 830 and the third filter section 840 of Han. Making such modification can significantly reduce the temperature of the smoke, reduce a burning, hot and spicy feeling caused by the smoke entering the oral cavity, and improve the feeling of a smoking experience.
One of ordinary skill in the art would have a reasonable expectation of success in said modification because Han is open to various changes in form and details that may be made therein without departing from the spirit and scope of the disclosure of Han as discussed in the rejection of claim 1 above. This reads over the filter rod limitation of claim 12.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Cao et al. (US 2020/0229487 A1) in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025), in view of Hwang et al. (WO 2020/009416 A1, US 2021/0227876 A1 relied upon) as applied to claim 12 above, and further in view of Yamauchi et al. (US 2020/0281261 A1).
Regarding claim 13, modified Han discloses all the claim limitations as set forth above but does not explicitly disclose the claimed flavoring agent capsule.
Yamauchi, in the field of smoking articles, teaches a smoking article that includes an aerosol generating rod and a filter portion disposed adjacent to the aerosol generating rod, wherein the filter portion includes a filter body, a capsule member, and an adhesive. As shown in Figs. 1 and 2, a cigarette 11 includes an aerosol generating rod 14 including tobacco 12 (shredded leaves, tobacco) and cigarette paper 13 wrapped around the cut tobacco 12, a filter portion 15 disposed adjacent to the aerosol generating rod 14 ([0018]). The filter portion 15 includes a capsule member 23 that is embedded with the filter portion 15 and that holds a content liquid containing a flavorant inside a capsule shell 22 and an adhesive 24 that bonds the filter body 17 and the capsule member 23 ([0019]). The capsule member 23 position within the filter body 17 allows the user to easily crush the capsule member 23 not only with fingers, but by biting the capsule member 23 with teeth during smoking. Furthermore, since the fragrance generating source is close to the mouthpiece end, the smoker can enjoy a stronger flavor sensation ([0022]).
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 third filter segment of modified Han (the mouthpiece of Han) to include a capsule containing a liquid flavorant so that the smoker can enjoy a stronger flavor sensation when the capsule is crushed by the smoker as taught by Yamauchi. This reads over claim 13.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Cao et al. (US 2020/0229487 A1) as applied to claim 10 above, and further in view of Norman et al. (US 3,664,352 A).
Regarding claim 14, Han discloses all the claim limitations as set forth above. Han additionally discloses the first filter segment 810 may include a paper filter, porous molding, and the like ([0101]), reading over the first filter segment comprises a paper material. Han discloses the second filter segment 830 may be a cellulose acetate filter into which one aroma capsule is inserted ([0111]), but does not explicitly disclose the second filter segment comprises a paper material.
Norman teaches a cigarette column 10 which is comprised of a mass of shredded tobacco 11, wrapped in cigarette paper 12. Attached to this column 10, by means of a paper wrapper 13, is a filter assembly 14 that consists of three parts: the plugs 15 and 16 and the mixed carbonate filter material packed in a space 17 between the plugs. The plugs 15 and 16, one located next to the tobacco column 10 and the other end of filter assembly remote from the tobacco consist of fibrous tobacco smoke filtering material of the kind generally used in cigarette filter manufacture. It may, for instance, be a plasticized bundle of cellulose acetate fibers of denier per filament between 1.5 and 25, and with a total denier between 30,000 and 90,000. Alternately, a shorter filter plug composed of convoluted creped paper may be used (Fig. 1; col 3, lines 6-24).
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 second filter segment of Han to be made of a paper material such as convoluted creped paper which is a fibrous tobacco smoke filtering material of the kind generally used in cigarette filter manufacture as taught by Norman. This reads over the second filter segment paper material of claim 14.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Hwang et al. (WO 2020/009416 A1, US 2021/0227876 A1 relied upon), in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025) as applied to claim 1 above, and further in view of Frank et al. (US 2020/0163377 A1).
Regarding claim 15, modified Han discloses all the claim limitations as set forth above, specifically heater 126 may be an element for heating the liquid composition to generate aerosol (see claim 7 rejection). However, modified Han does not explicitly disclose the potassium carbonate pH adjuster.
Frank, in the same field, teaches tobacco constituent releasing components for inclusion in an aerosol provision device, the tobacco constituent releasing component including tobacco particles, optionally in an agglomerated structure (abstract, [0001]). According to a first aspect, the tobacco constituent releasing component having an agglomerated structure formed from a precursor composition comprising tobacco particles and one or more bases or a basic buffering system, the tobacco constituent releasing component having a basic pH ([0006], [0044]). Frank teaches the purpose of adjusting the pH of the tobacco particles and/or of the precursor composition is to provide tobacco constituents in a chemical form which means that they are readily released from the releasing component, and/or they are readily transferred to the aerosol generated by the smoking article [0048]). In some embodiments the base used to adjust the pH is a hydroxide or a carbonate. Suitable bases include, for example, potassium hydroxide, calcium hydroxide, silver hydroxide, ammonium hydroxide, magnesium hydroxide, sodium carbonate, sodium bicarbonate, and potassium carbonate ([0052]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Han and include potassium carbonate as a pH adjuster of Frank for the advantage of providing tobacco constituents in a chemical form so that they are readily transferred to the aerosol generated by the smoking article as taught by Frank. This reads over claim 15.
Claims 16 is rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (EP 3603426 A1) in view of Gage et al. (US 2020/0128880 A1, cited on the IDS dated 08/20/2025) as applied to claim 7 above, and further in view of Taurino (US 2021/0392956 A1).
Regarding claim 16, modified Han discloses all the claim limitations as set forth above, specifically heater 126 may be an element for heating the liquid composition to generate aerosol (see claim 7 rejection). However, modified Han does not explicitly disclose a heating temperature of the heater is 200o C or less.
Taurino, in the same field, teaches an aerosol generation device heating an aerosol-forming substrate comprising a liquid mixture ([0007], [0009], [0013], [0022]), wherein the temperature of the heating element or the aerosol-forming substrate is between 150 and 200o C ([0024]-[0025]). Therefore, the prior art temperature range is less than 200o C of the claimed range and is therefore completely encompassed by the claimed temperature range of 200o C or less of claim 16.
Taurino further teaches the liquid mixture may comprise glycerol (also referred to as glycerine) as an aerosol former ([0018], [0046]). Han discloses the liquid composition may also include glycerin and propylene glycol. Therefore, one of ordinary skill in the art would be motivated to select the heating temperature range taught by Taurino since Taurino teaches a similar aerosol former as contained in the liquid composition of modified Han. This reads over claim 16.
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 1-2, 4-7, and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6 and 11-12, of copending Application No. 18/563,144 (reference application, hereinafter referred to as Park). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Park claim 1 claims an aerosol-generating device, comprising a receiver for receiving a medium receiving rod in a replaceable manner; an atomizer that generates an aerosol; and a power supply for transmitting power (i.e., providing power) to heat the atomizer; wherein the aerosol generated by the atomizer passes through the medium receiving rod received in the receiver such that a medium is transferred from medium pulp included in a filter segment of the medium receiving rod by heat of the aerosol. It would be obvious to arrive at the claimed invention as the medium of ref Park is included in the medium receiving rod since the filter segment containing the medium pulp from which the medium is transferred is a component of the medium receiving rod.
Regarding claim 2, Park claim 3 claims the exact same subject matter.
Regarding claims 4 and 5, Park claim 4 claims the exact same subject matter.
Regarding claim 6, Park claim 5 teaches the exact same subject matter.
Regarding claim 7, Park claim 6 teaches the same subject matter. It would be obvious to arrive at the claimed invention as one of ordinary skill in the art would recognize “transferring the liquid composition material from the liquid storage tank to the heater” of ref Park reads on “facilitating transfer of the liquid composition.”
Regarding claim 11, Park claim 9 teaches the exact same subject matter.
Regarding claim 12, Park claim 10 teaches the same subject matter. It would be obvious to arrive at the claimed invention as the filter rod disposed downstream of the second filter segment of ref Park is disposed at a downstream end of the medium receiving rod
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Christopher M Rodd/Primary Examiner, Art Unit 1766
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