CTNF 18/573,872 CTNF 71017 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-34-01 Claim 22 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 22, “the spacer element” in line 2 lacks positive antecedent basis as no such element is recited in claims 1 or 7 from which it depends. 07-36-01 AIA Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 7 recites limitations already fully recited by claim 1 thus, it does not appear to further limit the structure of claim 1 . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 1, 4-16, 19, 20-24, 28-31, and 33 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by US 4,582,071 to Wescott et al. (hereinafter Wescott ) . With respect to claims 1, 4, 8, and 9 , Westcott teaches an article “for use with a non-combustible aerosol provision device.” Notably the article of Westcott is capable of being used with a non-combusting aerosol generating device. 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 satisfying the claimed structural limitations. Ex parte Masham , 2 USPQ2d 1647. The article of Westcott comprises an aerosol generating material 11 , a mouth end section 15 , a tubular element 16 having a longitudinal axis and located PNG media_image1.png 290 454 media_image1.png Greyscale between the aerosol generating material 11 and the mouth end section 15 . For example, as shown in Figure 15, the tubular element 16 extends between the aerosol generating material 11 and the mouth end section 15 . The tubular element 16 comprises an inner wall, and a ventilation area 17 in the tubular element through which air 88 is drawn into the tubular element, wherein a cylindrical coaxial component 19 is received in the tubular element 16 . The component may take many forms. As shown in Figures 4, 12, 13, 16, 21, and 22, the component has an outer surface and is configured so that aerosol flow through the tubular element is diverted into a flow path 14 formed between the outer surface of the component and said inner wall of the tubular element, and wherein the ventilation area is configured such that ventilation air enters the flow path through PNG media_image2.png 406 382 media_image2.png Greyscale the ventilation area 17 to mix with the aerosol which is flowing along the flow path, before flowing into said mouth end section. Note that Wescott discloses that tobacco smoke (aerosol) 89 enters the flow path 14 in the embodiment shown in Figures 14 and 15. See col.4, lines 45-68. As to claims 5 and 6 , Figure 5 above illustrates that the aerosol 89 flows in an axial direction along the tubular element 19 , and wherein the ventilation area 17 is configured such that ventilation air entering the flow path 14 flows towards the aerosol flowing along the flow path at a right angle to the longitudinal axis of the tubular element. With respect to claim 7 , Figure 4 above illustrates that the component is shaped and positioned within the tubular element so that the flow path 14 extends between the outer surface of the component and the inner surface of the tubular element. As to claims 10-12, 14, and 15 , Westcott teaches the component may take may shapes such as forming a plurality of circumferentially spaced pockets or depressions (Figure 11) or linear depressions that extend in an axial direction (Figure 10). With respect to claim 13 , the depressions 21 of Figure 10 have a width and thus, extend in a circumferential direction as well. As to claim 16 , the ventilation area 17 comprises a series of openings spaced from each other and extending about the circumference of the tubular element. See Figure 4 above. With respect to claims 19 and 20 , the outer surface of the inward corrugations forming the flow paths 14 are spaced from the inner wall of the tubular element and a portion of the outer surface of the outward corrugations of the component are in contact with the inner wall of the tubular element. See Figure 4. As to claim 22 , Westcott teaches that assembly may be used with a “papirossi” cigarette comprising a hollow cardboard tube. See col.1, lines 45-48. With respect to claim 21 , as shown in Figures 8-13, the depressions or corrugations are longitudinally spaced from the top of wrapper 16 and thus, the aerosol generating material. With respect to claim 23 , the assembly includes a filter section 12 located between the tubular element 19 and the mouth end 15 . As to claim 24 , as shown in Figure 15 the component 19 extends into the tubular element 19 from the filtration section 12 . With respect to claims 28 and 29 , the filtration section 12 and component 19 may both comprise cellulose acetate tow. See col.11, lines 18-24. As to claim 30 , Westcott teaches the component 19 is substantially impermeable. See col.3, lines 32-34 . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 18 and 25-27 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Westcott . With respect to claim 18 , Westcott does not disclose that the ventilation opening 17 is aligned with a corresponding depression in every embodiment. However, in Figures 1 and 3, the ventilation opening is aligned with the depression. It would have been obvious to a POSITA to align a ventilation opening 17 with each depression in the other embodiments, such as those shown in Figures 4 and 9-11 in order to promote flow of the ventilation air along the flow path 14 . As to claim 25 , Westcott does not teach that the component is integrally formed with the filtration section 12 . Westcott instead uses glue and lamination to fix the various parts of the article together. It has been held that the use of a one piece construction instead of multiple parts fixed together would have been obvious as a matter of engineering choice. In re Larson , 340 F.2d 965,968 144 USPQ 347,349 (CCPA 1965). With respect to claim 26 , the filtration section 12 and component 19 may both comprise cellulose acetate tow. See col.11, lines 18-24. As to claim 27 , Westcott does not state that the component is air permeable. However, in the embodiment shown in Figure 4, there are perforations 13a in the plug wrapper. Westcott teaches that “[v]entilating air is thus enabled to enter the filter plug from channels 14 through perforations 13a . See col.4, lines 31-40. For this to occur, the component would have to be air permeable. Thus, it would have been obvious to provide an air permeable component when it is desired to permit ventilating air to enter the filter plug from channels 14 through perforations 13a . Allowable Subject Matter 12-151-07 AIA 07-97 12-51-07 Claim s 2, 3, 17, and 32 are allowed. 13-03 AIA The following is an examiner’s statement of reasons for allowance: Westcott does not teach or suggest a spacer element such that the tubular element is located between the aerosol generating material and the spacer element and wherein the spacer element has a ventilation area through which air is drawn into the spacer element and mixes with the aerosol which flowed along the flow path, before flowing into the mouth end section . Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH L MCKANE whose telephone number is (571)272-1275. The examiner can normally be reached Mon-Thu 6:30a-4:30p EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ELIZABETH L MCKANE/Specialist, Art Unit 3991 Application/Control Number: 18/573,872 Page 2 Art Unit: 3991 Application/Control Number: 18/573,872 Page 3 Art Unit: 3991 Application/Control Number: 18/573,872 Page 4 Art Unit: 3991 Application/Control Number: 18/573,872 Page 5 Art Unit: 3991 Application/Control Number: 18/573,872 Page 6 Art Unit: 3991 Application/Control Number: 18/573,872 Page 7 Art Unit: 3991 Application/Control Number: 18/573,872 Page 8 Art Unit: 3991
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