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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the (1) “further comprising a compartment containing a smoke-altering material” (claim 42), (2) “wherein the smoke-altering material comprises an activated carbon (43), and (3) “the ends of the tobacco rod are open to expose the smokable filler material, and wherein the filter element and the tobacco rod are axially alighted but do not abut one another” (51), must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
As presently illustrated and disclosed, no compartment containing smoke-altering material is shown. The compartment illustrated (60) is expressly disclosed as a compartment adapted for receiving the breakable capsule 54. This capsule is not disclosed as containing smoke-altering material and instead directed to a flavoring agent that has minimal interaction with the smoke-altering material (see PGPUB paragraph 0067-0068).
The applicant is advised that the nature of the compartment being claimed appears to be disclosed and illustrated by the prior art cited in the rejection below. (Crooks et al. US 20070227548). However, the compartments that appear to be in line with the claim language would fail to further limit the claims because filter elements would not longer be in an end-to-end relationship as claimed and would likely represent new matter not originally disclosed (see figures 2-4, 8-10, compartment 32).
Claim Rejections - 35 USC § 102
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 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 –
(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.
Claim(s) 41, 44-47, and 50 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sensabaugh et al. (US 4,793,365).
Regarding claims 41, 44, and 50, Sensabaugh et al. disclose a smoking article that does not burn tobacco with a tobacco rod (i.e. plug of tobacco, see figure 4, element 28, see below), and col. 6, 9-15) and two filter elements in an end-to-end configuration, the first has a central channel (40) with an annular section of cellulose acetate (42) surrounding an optional plastic tube (i.e. channel, 44) and the mouth end filter is a low efficiency cellulose acetate filter plug (45). The plastic tube is optional and if not used, the wall of the channel is inherently formed of the same material as the filter material in that section.
Regarding claim 45, the tobacco rod of Sensabaugh contains tobacco, which is inherently an aerosol forming material (i.e. cigarette smoke).
Regarding claims 45 and 46, the tobacco rod of Sensabaugh contains propylene glycol and glycering (i.e. polyols, see col. 3, 28-47, and example 7).
Regarding claim 47, Sensabaugh discloses that 6 mg of propylene glycol and glycerin are used along with 60 mg of tobacco. This is 10% by weight aerosol forming material by weight of aerosol forming material and tobacco material (see example 7).
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 for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 42 and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sensabaugh et al. (US 4,793,365) as applied to claim 41 above, and in further view of Crooks et al. (US 20070227548).
Regarding claims 42 and 43, Sensabaugh et al. does not disclose a compartment containing smoke altering material or that the material is activated carbon. However, it is known in the art to form compartments that contain smoke altering material.
Crooks et al, for instance, disclose a filter element very similar to Sensabaugh et al. in that a first segment adjacent to the tobacco rod contains a channel. In the mouth end filter, Crooks et al. disclose a compartment containing adapted for receiving a breakable capsule that can contain a payload incorporating a compound that is intended to introduce some change to the nature or character of mainstream smoke drawn through that filter element [0068]. Crooks et al. also describe that carbon particles can be used to change the character of the smoke [0005]. It would have been obvious to one of ordinary skill in the art at the time of invention to use the activated carbon disclosed by Crooks et al. in the capsule of Crooks et al. to change the character of mainstream smoke, and use the compartment and capsule in the filter element of Sensabaugh so that the mainstream smoke (i.e. aerosol) can be altered by the activated carbon. Incorporating one known cigarette filter segment in place of another is well known in the art and would be within the ability of one of ordinary skill and would produce predictable results (i.e. it would contribute the disclosed advantages).
Claims 48 and 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sensabaugh et al. (US 4,793,365) as applied to claim 41 and 45 above, and in further view of Casey, III et al. (US 5,396,911).
Regarding claims 48 and 49, Sensabaugh et al. do not expressly disclose the tobacco material is reconstituted.
However, Casey III, et al. disclose an aerosol forming material for a cigarette with a fuel source that is made of tobacco substrate (including reconstitute tobacco) which holds at least 15% by weight of aerosol material that includes glycerin (a polyol). In addition, the moisture content of the tobacco substrate is between 8 and 12%. Water is an aerosol forming material (col. 3, 8-68). It would have been obvious to one of ordinary skill in the art at the time of invention to use the tobacco material of Casey III, et al. in place of the tobacco material of Sensabaugh et al. in order to form a tobacco flavored aerosol.
Regarding claim 49, Casey III, et al. discloses that the tobacco and aerosol former can be cast (col 12, line 65—col. 13, line 2), however, the steps and parameters for the process for making or extracting the fibers for this slurry do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is a “product by process” claim.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Claim 51 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sensabaugh et al. (US 4,793,365) as applied to claim 41 above, and in further view of Baggett Jr. et al. (US 5,499,636).
Sensabauh et al. do not disclose a tobacco rod where the ends of the tobacco rod are open to expose the smokeable filler material and the filter element does not abut the tobacco rod. However, Baggett Jr. et al. disclose similar unconventional cigarette that has a tobacco rod with smokeable filler (80, 70) (see figure 4A), void immediately adjacent to the aerosol forming segment (i.e. spacer element, 91), a cylindrical sleeve segment (free flow filter segment, i.e. cooling segment, 102), and a mouthpiece filter (104). The void following the tobacco rod is used to “facilitate aerosol formation and to help cool the smoke.” (col. 3, 62-64).
It would have been obvious to one of ordinary skill in the art at the time of invention/filing to incorporate a void after the tobacco rod in the invention of Sensabaugh et al. to facilitate aerosol formation and help cool the smoke before the filter. The combination would have been within the ability of one of ordinary skill and the results would have been predictable (i.e. better formation of aerosol).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747
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