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
The office action is in response to Applicant’s amendment filed on 07/28/2026.
Claims 1-16 are pending.
Claims 1 and 10 are amended.
Claims 13-16 are new.
The objection to the specification has been withdrawn due to amendments made.
Response to Arguments
Applicant' s arguments, see pages 8-12, filed 07/28/2026, with respect to the rejection(s) of claims 1-13 under 35 U.S.C. 103, have been fully considered and are persuasive. Newly found prior art is applied in the modified rejection provided below.
Claim Interpretation
The “moisturizing agent” is being interpreted as a component that may include at least one of glycerin, guar gum, starch, methyl cellulose, ethylene vinyl acetate (EVA), gum arabic, or propylene glycol. Support for this interpretation can be found in Applicant’s Specification (pages 5 and 9).
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.
Claims 1-7, 9-11, and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Inagaki et al. (US 2020/0107574) and further in view of Inagaki’2 et al. (US-20240074490-A1).
Regarding Claims 1 and 6: Referring to fig. 1, Inagaki discloses a cigarette filter 1 having a circular cylinder shape and including a filter material 2 comprising a corrugated film 21 with ridge portions and valley portions extending from the first end surface to the second end surface to form a plurality of air flow paths 22 that allow air to flow from the first end surface to the second end surface; a plurality of particles (granules) 3 arranged in the air flow paths and attached to the filter material; and a filter wrapping paper 4 wrapping the filter material (Abs., [0006]-[0008], [0032]-[0039]).
Inagaki further discloses, in some embodiments, the filter is manufactured by adding a plurality of particles on a corrugated film, applying a liquid additive containing a binder to the surface of the corrugated film and the surfaces of the particles by a spray or the like, gathering the corrugated film to have a plurality of air flow paths in a longitudinal direction and have a circular cylinder shape as a whole, thereby arranging the particles in the air flow paths; and wrapping the filter material with a filter wrapping paper to obtain a filter ([0112]-[0115], [0118]). Suitable binders for attaching the particles to the filter material include starch, guar gum, gum Arabic, etc. [0063], which are also moisturizers as detailed in Applicant’s Specification. Absent convincing evidence of unexpected results commensurate in scope with the claims, selecting starch, guar gum, gum Arabic as a binder with a reasonable expectation of obtaining a suitable filter.
Inagaki further discloses the particles are added in an amount of preferably 20 to 160 mg, per 10 mm filter length ([0066]). The preferred amount of 20 to 60 mg per 10 mm filter length corresponds to 2-6 mg/mm of length of the filter, which overlaps the claimed range of the granules in an amount of 3 to 6mg/mm and is therefore considered prima facie obvious.
While Inagaki teaches a biodegradable corrugated film for the filter material ([0047]), Inagaki does not explicitly disclose paper as an example of a biodegradable material for the paper filter and therefore does not explicitly disclose a paper filter that is formed by rolling base paper (I), a width of the base paper is 200 to 250 mm (II) and the base paper having a basis weight of 15 to 30 g/m^2 (III).
Inagaki’2 directed to a filter with added liquid, discloses a filter for smoking articles ([0002]) comprising:
a paper filter ([0046]-[0052];[0139]) and is formed into a cylindrical shape (i.e., rolling base paper) (Figure 1, element 2) (I);
a liquid component that includes glycerol; (i.e., moisturizing agent) that is applied to at least a portion of a surface of the paper filter (claim 4); and
a filter wrapper that wraps the paper filter (claim 1).
Inagaki’2 further discloses paper as a suitable filter material for biodegradable materials and that one feature of the paper filter is that it is more easily biodegradable than synthetic fiber tows such as cellulose acetate tows. ([0046]-[0052]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Inagaki by making the biodegradable corrugated film of Inagaki a corrugated paper film, as taught by Inaaki’2, because both are directed to filters for smoking articles comprising biodegradable materials, Inagaki teaches a paper filter is more easily biodegradable than synthetic materials ([0048]), and this merely involves applying a known technique of using a paper material of a similar filter to yield predictable results.
Modified Inagaki discloses the paper base material comprises a width of most preferably 170 to 230 mm (Inagaki’2 [0056]). The range disclosed by the prior art overlaps the claimed range of a width of the base paper is 200 to 250 mm, and is therefore considered prima facie obvious. (II)
Modified Inagaki further discloses the paper base material comprises a basis weight of most preferably 25 to 45 gsm (Inagaki’2 [0054]). The range disclosed by the prior art overlaps the claimed range of a basis weight of the base paper is 15 to 30 gsm, and is therefore considered prima facie obvious. (III)
Claim 2: spraying the binder on the surfaces of the particles forms a coating layer on the surface thereof ([0118]).
Claim 3: The coating layer on the particles comprising starch, guar gum, gum Arabic, etc. includes claimed coating materials ([0063]).
Claim 4: Using the disclosed of amounts of particles of 20 to 60 mg per 10 mm filter length, a filter of 24 mm in circumference as a cross-sectional area in the radial direction of about 458.4 mm-2 or 0.4584 cm2, and a 10 mm filter length has a volume of 0.4584 cm3. In examples, Inagaki et al makes filters of 20 mm length [0233], which results in a filter volume of 0.9168 cm3. The total filling density of the particles for a filter 20 mm in length is calculated to be 20 X 2 mg/0.9168 cm3 to 60 X 2 mg/0.9168 cm3 or about 0.436 g/cm3 to about 1.30 g/cm3. The calculated particle filling density for Inagaki et al subsumes the claimed range. Absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to none of ordinary skill in the art to obtain a claimed particle filling density in the filter of Inagaki et al.
Claim 5: Inagaki et al discloses activated carbon particles ([0077], [0087], [0149], [0156], [0243], Example 2).
Claim 7: Inagaki et al discloses a particle size from 0.355 mm to 1.2 mm [0061], which subsumes the claimed range. Absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to obtain a claimed particle size in the filter of Inagaki et al.
Claim 9: Inagaki et al discloses combining the inventive filler with a filter segment containing flavor releasing function (e.g., flavor granules) to broaden flavor variations of a smoking article [0132].. The activated carbon particles and the flavor granules both provide for variations in flavor of a smoking article. It would have been obvious to one of ordinary skill in the art to further include flavor releasing granules in the filter of Inagaki et al to broaden flavor variations of a smoking article including the filter because the courts have held that “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Claim 10: Inagaki et al discloses a cigarette comprising:
A tobacco rod including a tobacco filler (cigarette column) and connected to one end of the filter (a cigarette filter portion that is positioned at one side of the cigarette column portion and comprises one or more cigarette filters); and a tipping paper wrapped on the filter and the tobacco rod to connect the filter and the tobacco rod.(a tip paper that wraps the cigarette filter portion and a portion of the cigarette column portion), wherein the smoking article filter is the smoking article filter according to the invention (at least one of the one or more cigarette filters comprises a paper filter as claimed in instant Claim 1) ([0174]-[0184]). The features of the filter are as discussed above with respect to Claims 1-4.
Claim 11: As discussed above, Inagaki et al discloses amounts of particles and filling density of particles in the filter significantly overlaying the claimed ranges. Therefore obtaining a claimed percentage of particles by mass based on the entire cigarette filter portion would also have been obvious to one of ordinary skill in the art absent convincing evidence of unexpected results.
Claim 13: Modified Inagaki discloses the paper base material comprises a width of most preferably 170 to 230 mm (Inagaki’2 [0056]). The range disclosed by the prior art overlaps the claimed range of a width of the base paper is 210 to 220 mm, and is therefore considered prima facie obvious.
Claims 14-15: Modified Inagaki further discloses the paper base material comprises a basis weight of most preferably 25 to 45 gsm (Inagaki’2 [0054]). The range disclosed by the prior art overlaps the claimed range of a basis weight of the base paper is 24 to 26.5 gsm, and is therefore considered prima facie obvious.
Claim 16: Inagaki discloses the length of the filter is 120 mm ([0209]) and the moisturizing agent is at least one of starch, guar gum, and methyl cellulose ([0063]), but does not explicitly disclose the amount of liquid (i.e., moisturizing agent) is added to the filter and therefore does not explicitly disclose an amount of the moisturizing agent is 0.5 to 5 g/mm based on a length of the paper filter.
However, Inagaki’2, which is directed to a similar filter for a smoking article, discloses the liquid (i.e., moisturizing agent) which can include glycerin ([0061]), in an amount of most preferably from 10 to 30 mg ([0063]).
Inagaki’2 further discloses a thickener, such as carboxymethyl cellulose (which is the same thickener also disclosed by Inagaki), is applied in an amount of 10 to 150 mg per filter length ([0068]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Inagaki by making the liquid thickener applied to the filter an amount of 10 to 150 mg, as taught by Inagaki’2 because both are directed to filters for smoking articles, Ignaki’2 teaches a known amount of the same liquid of a similar filter ([0068]), and this merely involves applying a known technique of using an amount of liquid thickener known in the art of a similar filter, especially when the prior art is silent to an amount, to yield predictable results.
Modified Inagaki therefore discloses a moisturizing agent, such as methyl cellulose, in an amount of 0.083 to 1.25 mg/mm based on a length of the paper filter. The range disclosed by the prior art overlaps the claimed range of the moisturizing agent applied from 0.5 to 5 mg/mm, and is therefore considered prima facie obvious.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Inagaki et al in view of Inagaki’2 et al., as applied to claim 1 above, and further in view of Tiggelbeck et al (US 3,972,335).
Inagaki et al does not disclose that the granules comprise sugar and therefore does not explicitly disclose a total amount of sugar in the granules is 35% or more.
Tiggelbeck et al teaches that mentholated filtered cigarettes are popular but have some disadvantages. Cigarette filters comprising activated carbon have a disadvantage because the activated carbon adsorbs the greater part of the menthol (smoke flavoring agent) before the menthol can be delivered from its original place on the tobacco to the smoker (col 1, lines 10-13 and 34-43). To address this disadvantage, Tiggelbeck et al discloses modifying the pore structure of the activated carbon by adding a pore-modifying agent to occlude smaller pores of the activated carbon which comprise the most retentive portion of the effective pore structure of the activated carbon with respect to the smoke-flavoring agent (menthol). The remaining portion of the effective pore structure is less retentive to the smoke-flavoring agent. The activated carbon so treated impregnated with smoke-flavoring agent possesses improved shelf life and delivery rates.(col 2, lines 19-25 and 60-68; col 3, lines 1-11).
The amount of pore-modifying agent added to the activated carbon is preferably up to about 98% by weight of the original activated carbon (col 3, lines 34-38). A particularly preferred pore-modifying agent is any member of the group of saccharides or sugars (col 4, line 12-17). The amount of sugar overlaps the claimed range of at least 35%, and is therefore considered prima facie obvious.
It would have been obvious to one of ordinary skill in the art to make the cigarette of Modified Inagaki et al a mentholated cigarette as a popular flavored cigarette. It would further have been obvious to treat the activated carbon particles of Inagaki et al with a claimed amount of sugar to block the pores from adsorbing the greater part of the menthol before the menthol can be delivered from its original place on the tobacco to the smoker, to yield predictable results.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Inagaki et al in view of Inagaki’2 et al., as applied to claim 10 above, and further in view Deevi et al (US 2004/0110633).
Inagaki et al does not disclose that the tipping paper comprises aluminum, copper, zinc, gold or iron.
Deevi et al teaches the inclusion in a cigarette filter of a nanocomposite copper-ceria catalyst capable of reducing the amount of at least one constituent (e.g.-carbon monoxide, nitric oxide, hydrocarbons) in mainstream tobacco smoke (Abs,. [0001], [0012], [0026], [0029], [0048]=[0050]). The catalyst can be incorporated in the mouthpiece filter and/or in the tipping paper [0078].
It would have been obvious to one of ordinary skill in the art to incorporate a nanocomposite copper-ceria catalyst of Deevi et al into the cigarette filter of Modified Inagaki et al to reduce amounts of carbon monoxide, nitric oxide and/or hydrocarbons in mainstream smoke, since all are directed to filters of smoking articles and the modification yields predictable results.
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, 5, and 10-16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, and 9-12 of copending Application No. 18/289,843 (reference application). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of the claims are directed to a cigarette filter comprising: a paper filter that is formed by rolling base paper; a moisturizing/wetting agent that is applied to at least a portion of a surface of the paper filter; granules that are bound to the wetting/moisturizing agent; and a filter wrapper that wraps the paper filter, wherein an amount of the granules is 3 mg/mm to 6 mg/mm based on a length of the paper filter, a width of the base paper is 200 mm to 250 mm, and the base paper has a basis weight of 15 g/m2 to 30 g/m2.
The claims differ in that rejected claim 1 recites a moisturizing agent and conflicting claim 1 recites a wetting agent, however both agents comprise the same materials and same purpose and therefore it is obvious to one of ordinary skill in the art that both agents are the same.
Claim 1 is obvious over conflicting claim 1.
Claim 2 is obvious over conflicting claim 1.
Claim 5 is obvious over conflicting claim 12.
Claim 10 is obvious over conflicting claim 9.
Claim 11 is obvious over conflicting claim 10.
Claim 12 is obvious over conflicting claim 11.
Claims 13-14 are obvious over conflicting claim 1.
Claim 15 is obvious over conflicting claim 9.
Claim 16 is obvious over conflicting claims 5-6.
Conclusion
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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