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 .
Claim Rejections - 35 USC § 112
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.
Claims 9-12 are 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.
Claim 9 recites “wherein the further comprising a thermal energy absorber is in the form of a plurality of particles.” It is unclear what component is “further comprising” the thermal energy absorber. Further, it is unclear whether “a thermal energy absorber” refers to the thermal energy absorber recited in claim 1 or to an additional thermal energy absorber separate from the circular-disk thermal energy absorber recited in claim 1.
For purposes of continued examination, claim 9 is interpreted as requiring the smoking article of claim 1 to further comprise an additional thermal energy absorber, separate from the circular-disk thermal energy absorber recited in claim 1, wherein the additional thermal energy absorber is in the form of a plurality of particles.
Claims 10-12 also are rejected due to their dependency on claim 9.
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.
Claims 1–4, 6–9, 13–14, and 16–18 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Banerjee et al. (U.S. 5,105,831).
Regarding claim 1, Banerjee teaches a smoking article comprising:
an outer wrap circumscribing at least a portion of the smoking article (tubular foil wrapper 40 extending from the rear periphery of fuel element 10 to beyond second aluminum disk 44) (col. 7, ll. 64–68);
an upstream lighting end (tapered lighting end 9) (col. 7, ll. 55–58);
a downstream mouth end (mouthend piece comprising cellulose acetate rod 16, tube 18, and filter piece 20) (col. 8, ll. 3–7);
a carbon heat source positioned proximate the lighting end (pressure-formed carbonaceous fuel element 10) (col. 7, ll. 55–57);
a tobacco material positioned downstream of the carbon heat source (tobacco 48 within container 12 downstream of fuel element 10) (col. 7, l. 68–col. 8, l. 3); and
a thermal energy absorber comprising one or more circular disks at least partially positioned between the tobacco material and the carbon heat source (aluminum disk 42 abutting the rear end of fuel element 10 and positioned upstream of tobacco 48) (col. 7, ll. 59–65).
The term “thermal energy absorber” is structurally defined by the recited one or more circular disks and does not impose a further structural limitation beyond the expressly recited disk structure and the aluminum disk of Banerjee would absorb thermal energy.
.
Regarding claims 2 and 3, Banerjee teaches the thermal energy absorber comprises one or more of a metallic or ceramic material and one or more of aluminum or an alumina material (aluminum disk 42) (col. 7, ll. 59–61).
Regarding claim 4, Banerjee teaches the smoking article including a thermal energy absorber comprising one or more circular disks (aluminum disk 42 positioned between fuel element 10 and tobacco 48) as set forth in claim 1 (col. 7, ll. 59–65).
Banerjee further teaches that its conductive container provides rapid and nearly even heating of the substances within the container (col. 4, ll. 31–39). Claim 4’s recitation that the thermal energy absorber is “configured to increase uniform distribution of heated air across the tobacco material” states an intended result of operating the claimed smoking article. Claim 4 does not positively recite any further structural feature of the circular disk absorber that distinguishes it from the absorber recited in claim 1.
Accordingly, the recited functional language does not impose a further structural limitation on the claimed smoking article beyond the thermal energy absorber of claim 1.
Regarding claim 6, Banerjee teaches the one or more circular disks have an individual diameter of about 5 mm to about 9 mm and a thickness of about 0.1 mm to about 4 mm (8 mm diameter aluminum foil disk having a thickness of 3.5 mil, i.e., about 0.089 mm) (col. 20, ll. 60–63).
Regarding claim 7, Banerjee teaches the one or more circular disks comprise a plurality of holes (aluminum disk 42 having center passageway 43 and aluminum disk 44 having passageway 45) (col. 7, ll. 59–63).
Regarding claim 8, Banerjee teaches the plurality of holes are distributed in a pattern (center passageway 43 centrally located in aluminum disk 42 and passageway 45 centrally located in aluminum disk 44 in an aligned axial arrangement) (col. 7, ll. 59–63).
Regarding claim 9, Banerjee teaches a further thermal energy absorber in the form of a plurality of particles (PG-60 carbon granules inserted into the foil tube and resting against the aluminum foil disk, separate from aluminum disk 42) (col. 20, l. 64–col. 21, l. 3).
Regarding claim 13, Banerjee teaches a thermal energy absorber comprising a material (aluminum disk 42) (col. 7, ll. 59–61). The recited specific heat capacity is a physical property of the aluminum material. Aluminum has a specific heat capacity within the claimed range of about 0.1 kJ/kg·K to about 3 kJ/kg·K.
Regarding claim 14, Banerjee teaches the tobacco material further includes an aerosol precursor composition (tobacco 48 in a mixture with particulate substrate 46 loaded with one or more aerosol-forming materials) (col. 7, l. 68–col. 8, l. 3).
Regarding claim 16, Banerjee teaches the carbon heat source has a plurality of air inlet holes extending longitudinally therethrough (carbonaceous fuel element 10 having seven longitudinal passageways 11) (col. 7, ll. 42–48).
Regarding claim 17, Banerjee teaches the smoking article including a thermal energy absorber comprising one or more circular disks (aluminum disk 42 positioned between fuel element 10 and tobacco 48) as set forth in claim 1 (col. 7, ll. 59–65).
Banerjee further teaches that the conductive container acts as a heat sink for heat generated by the fuel element and helps prevent the fuel element from burning too hot (col. 4, ll. 50–59). Thus, Banerjee teaches that its aluminum disk thermal energy absorber is capable reducing the temperature produced by the carbon heat source.
Applicant specification-as-filed further identifies aluminum disks as thermal energy absorbers positioned between the carbon heater and the tobacco material. (Spec., p. 22, ll. 5–18; p. 22, ll. 20–27) and also reports testing smoking articles containing circular aluminum disks and aluminum spheres for crest-temperature performance. (Spec., p. 23, ll. 15–31). In particular, the specification reports that HNB2 samples containing aluminum thermal energy absorbers had maximum temperatures about 100°C to about 300°C lower than the HNB2 control samples, and that samples containing 18 aluminum spheres produced crest-temperature decreases in excess of 300°C. (Spec., p. 24, ll. 10–20).
Accordingly, the instant specification evidences that aluminum thermal energy absorbers positioned between a carbon heat source and tobacco material are capable of decreasing a crest temperature by an amount within the claimed range of about 50°C to about 500°C.”
In view of Banerjee’s teaching that its aluminum disk is a heat sink that prevents excessive fuel-element temperature, one of ordinary skill in the art would reasonably expect Banerjee’s aluminum disk thermal energy absorber to be capable of decreasing a crest temperature of the smoking article by the claimed amount.
Claim 17 does not recite any further structural distinction from the aluminum disk thermal energy absorber recited in claim 1 that would distinguish over Banerjee.
Regarding claim 18, Banerjee teaches the downstream mouth end further comprises a filter material (cellulose acetate filter piece 20) (col. 8, ll. 3–7).
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 (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 10–12 are rejected under 35 U.S.C. § 103 as being unpatentable over Banerjee et al. (U.S. 5,105,831) in view of Paine et al. (U.S. 2008/0053469), hereinafter modified Banerjee.
Regarding claim 10, Banerjee teaches the smoking article of claim 9 having a further thermal energy absorber in the form of a plurality of particles (PG-60 carbon granules positioned between the aluminum foil disk and the tobacco material) (col. 20, l. 64–col. 21, l. 3), but does not teach that the particles are substantially spherical in shape.
Paine teaches the particles are substantially spherical in shape (spherical beaded carbon material 24) (¶ [0038]). Paine is in the same field of endeavor as Banerjee because both references are directed to smoking articles containing particulate carbon material.
Paine teaches that spherical beaded carbon provides a close-packed array that minimizes channeling of the gas stream through the carbon bed and maximizes gas-phase contact with carbon surfaces (¶ [0038]). Banerjee’s carbon granules are likewise positioned in the gas-flow path between the fuel element and the tobacco material. Thus, Paine’s spherical beaded carbon is compatible with Banerjee’s particulate carbon region and would predictably provide a more uniform gas-flow path and heat transfer through that region before the heated gas reaches the tobacco material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Banerjee’s particulate carbon granules to be substantially spherical, as taught by Paine, to provide a more uniformly packed particulate carbon bed with more uniform gas flow and heat transfer to the tobacco material.
Regarding claim 11, modified Banerjee teaches the thermal energy absorber comprises between about 3 to about 500 particles (a close-packed bed of approximately 473 spherical carbon beads).
Paine teaches a completely filled filter cavity having a length of 2.5 mm and a standard cigarette circumference of 24 mm (¶ [0071]), containing 0.7 mm diameter spherical activated-carbon beads (¶ [0065]). Paine further teaches that the spherical beads are arranged in a close-packed array (¶ [0038]).
The disclosed geometry yields approximately 473 beads:
Cavity diameter = 24 mm / π = 7.64 mm
Cavity volume = π × (7.64 mm / 2)² × 2.5 mm = 114.6 mm³
Volume per 0.7 mm bead = (4 / 3) × π × (0.7 mm / 2)³ = 0.1796 mm³
Number of beads = (114.6 mm³ × 0.7405) / 0.1796 mm³ = 472.6 beads
Thus, Paine teaches a quantity of approximately 473 spherical carbon beads, which is within the claimed range of about 3 to about 500 particles.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide modified Banerjee’s particulate thermal energy absorber with the disclosed quantity of Paine’s spherical carbon beads to obtain the uniformly packed carbon bed described above.
Regarding claim 12, modified Banerjee teaches the particles have a diameter of about 0.005 mm to about 5 mm (0.7 mm diameter spherical activated-carbon beads) (¶ [0065]).
Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over Banerjee et al. (U.S. 5,105,831) in view of Robinson et al. (U.S. 2008/0092912), hereinafter modified Banerjee.
Regarding claim 15, Banerjee teaches a tobacco material (tobacco 48 positioned downstream of the carbon heat source) (col. 7, l. 68–col. 8, l. 3), but does not teach that the tobacco material is in one or more of a shredded or particulate form.
Robinson teaches the tobacco material is in one or more of a shredded or particulate form (cut or shredded pieces of tobacco lamina or stem, granulated tobacco, tobacco dust, or tobacco powder) (¶ [0050]). Robinson is in the same field of endeavor as Banerjee because both references are directed to smoking articles having tobacco material heated to generate an aerosol.
Robinson teaches that shredded and particulate tobacco are conventional tobacco configurations for incorporation into smoking articles. Thus, Robinson’s tobacco forms are compatible with Banerjee’s downstream tobacco material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Banerjee’s tobacco material in shredded or particulate form, as taught by Robinson, because Robinson teaches those forms as conventional tobacco configurations for smoking articles.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,022,859.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant independent claim 1 is merely broader than claim 5 of U.S. Patent No. 12,022,859. It is clear that all of the elements of instant claim 1 are found in claim 5 of the patent. The difference lies in the fact that the patented claim includes more elements and is thus much more specific. Thus the invention of the patented claim 5 is in effect a "species" of the "generic" invention of the instant claim 1. It has been held that the generic invention is "anticipated” by the “species". See MPEP 804 Section 11(B). Since claim 1 are anticipated by patented claims 5, they are not patentably distinct from the patented claim 5.
Claims 1–4 and 6–18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–4 and 6–18 of U.S. Patent No. 12,022,859. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite the same smoking-article arrangement including a carbon heat source, downstream tobacco material, a particle-form thermal energy absorber, and circular-disk thermal energy absorbers positioned between the carbon heat source and the tobacco material.
In particular, claim 1 of the instant application recites a smoking article having an outer wrap, a lighting end, a mouth end, a carbon heat source positioned proximate the lighting end, tobacco material downstream of the carbon heat source, and one or more circular-disk thermal energy absorbers positioned between the tobacco material and carbon heat source. Although claim 1 of U.S. Patent No. 12,022,859 does not expressly recite that the thermal energy absorber comprises one or more circular disks, claim 5 of U.S. Patent No. 12,022,859 teaches that the thermal energy absorber may further comprise one or more circular disks. The circular disks are disclosed as an additional thermal energy absorber arrangement in the same smoking article and are positioned between the tobacco material and the carbon heat source. Accordingly, it would have been obvious to one of ordinary skill in the art to provide the thermal energy absorber of claim 1 of U.S. Patent No. 12,022,859 with one or more circular disks, as taught by claim 5, to provide an additional thermal energy absorber in the region between the carbon heat source and the tobacco material.
Thus, claim 1 of the instant application is not patentably distinct from claim 1 of U.S. Patent No. 12,022,859 in view of claim 5 thereof.
Claim 2 of the instant application is not patentably distinct from claim 2 of U.S. Patent No. 12,022,859 because both claims recite that the thermal energy absorber comprises a metallic or ceramic material.
Claim 3 of the instant application is not patentably distinct from claim 3 of U.S. Patent No. 12,022,859 because both claims recite that the thermal energy absorber comprises aluminum or alumina material.
Claim 4 of the instant application is not patentably distinct from claim 4 of U.S. Patent No. 12,022,859 because both claims recite that the thermal energy absorber is configured to increase uniform distribution of heated air across the tobacco material.
Claim 6 of the instant application is not patentably distinct from claim 6 of U.S. Patent No. 12,022,859 because both claims recite that the circular disks have an individual diameter of about 5 mm to about 9 mm and a thickness of about 0.1 mm to about 4 mm.
Claim 7 of the instant application is not patentably distinct from claim 7 of U.S. Patent No. 12,022,859 because both claims recite that the circular disks comprise a plurality of holes.
Claim 8 of the instant application is not patentably distinct from claim 8 of U.S. Patent No. 12,022,859 because both claims recite that the plurality of holes are irregularly shaped, randomly distributed, or distributed in a pattern.
Claim 9 of the instant application is not patentably distinct from claims 1 and 5 of U.S. Patent No. 12,022,859 because the patented claims recite both a particle-form thermal energy absorber and one or more circular disks in the same smoking article. The instant claim likewise recites a smoking article having the circular-disk thermal energy absorber of claim 1 and a further thermal energy absorber in the form of a plurality of particles.
Claim 10 of the instant application is not patentably distinct from claim 9 of U.S. Patent No. 12,022,859 because both claims recite that the particles are substantially spherical in shape.
Claim 11 of the instant application is not patentably distinct from claim 10 of U.S. Patent No. 12,022,859 because both claims recite that the thermal energy absorber comprises between about 3 and about 500 particles.
Claim 12 of the instant application is not patentably distinct from claim 11 of U.S. Patent No. 12,022,859 because both claims recite that the particles have a diameter of about 0.005 mm to about 5 mm.
Claim 13 of the instant application is not patentably distinct from claim 12 of U.S. Patent No. 12,022,859 because both claims recite a thermal energy absorber comprising a material having a specific heat capacity of about 0.1 kJ/kg K to about 3 kJ/kg K.
Claim 14 of the instant application is not patentably distinct from claim 13 of U.S. Patent No. 12,022,859 because both claims recite tobacco material further including one or more of a tobacco extract, an aerosol precursor composition, and a flavorant.
Claim 15 of the instant application is not patentably distinct from claim 14 of U.S. Patent No. 12,022,859 because both claims recite tobacco material in shredded or particulate form.
Claim 16 of the instant application is not patentably distinct from claim 15 of U.S. Patent No. 12,022,859 because both claims recite a carbon heat source having a plurality of air inlet holes extending longitudinally therethrough.
Claim 17 of the instant application is not patentably distinct from claim 1 of U.S. Patent No. 12,022,859 because both claims recite that the thermal energy absorber is configured to decrease a crest temperature of the smoking article by about 50°C to about 500°C.
Claim 18 of the instant application is not patentably distinct from claim 16 of U.S. Patent No. 12,022,859 because both claims recite that the downstream mouth end further comprises a filter material.
Accordingly, the claimed subject matter is not patentably distinct from the subject matter claimed in U.S. Patent No. 12,022,859.
Conclusion
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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