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 .
Election/Restrictions
Claim 34 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1-14-2026.
Applicant’s election of group I in the reply filed on 1-14-2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 15-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending US Patent Application No. 19/281,320 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are an obvious variation of at least claim 1 of copending US Patent Application No 19/281,320, hereafter “Lhaou”.
The rejected claims and conflicting claims are both directed to
Regarding Claim 15:
Lhaou claims an aerosol-generating article, comprising:
a rod of aerosol-generating substrate (claim 1 line 2); and
a ventilation zone arranged downstream the rod of aerosol-generating substrate, wherein the ventilation zone is configured as a hollow tubular ventilation zone (claim 1 lines 4-5), wherein
the ventilation zone comprises perforations (claim 1, line 8), wherein
one or more of the perforations has a non-circular cross-section having an ovality of at least 1.5, the ovality being a ratio of a large diameter of a perforation divided by a small diameter of the perforation (claim 1 line 9-10), wherein
a thickness of a peripheral wall of the ventilation zone is between 0.1 millimeter and 2.5 millimeters (line 11-12), wherein
the one or more perforations has a width of between 0.05 millimeter and 0.2 millimeter (line 12-13), and wherein
the one or more perforations has a length of between 0.25 millimeter and 1.0 millimeter (line 13-14)
Regarding Claim 16: Lhaou claims one or more perforations have a width of between 0.05 millimeter and 0.2 millimeter (claim 1 line 14-15) which overlaps with the one or more perforations has a width of between 0.11 millimeter and 0.13 millimeter which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 17: Lhaou claims one or more perforations have a length of between 0.25 millimeter and 1.0 millimeters (claim 1 line 15-16). Claim 17 claims the one or more perforations has a length of between 0.5 millimeter and 0.6 millimeter which falls within the range of Lhaou.
Regarding Claim 18: Lhaou claims the one or more of the perforations has an oval cross-section. (claim 2).
Regarding Claim 19: Lhaou claims the one or more of the perforations is slit-shaped. (claim 3)
Regarding Claim 20: Lhaou claims for one or more of the perforations, the length of the perforations is larger than the width of the perforations. (claim 4)
Regarding Claim 21: Lhaou claims for one or more of the perforations, a longitudinal axis of the perforation is parallel to a longitudinal axis of the aerosol-generating article. (claim 5)
Regarding Claim 22: Lhaou claims the ovality of the perforations is at least 2. (claim 6).
Regarding Claim 23: Lhaou claims an inner diameter of the hollow tubular ventilation zone is between 2.5 millimeters and 5.0 millimeters. (claim 7)
Regarding Claim 24: Lhaou claims an inner diameter of the hollow tubular ventilation zone is between 2.5 millimeters and 5.0 millimeters (claim 7). An inner diameter of the hollow tubular ventilation zone is 3.3 millimeters, falls within this range.
Regarding Claim 25: Lhaou claims the ventilation zone is arranged in a hollow tubular segment of an aerosol- cooling element, and wherein the hollow tubular segment has an inner volume of between 130 mm3 and 200 mm3. (claim 8)
Regarding Claim 26: Lhaou claims the ventilation zone is arranged in a hollow tubular segment of an aerosol- cooling element, and wherein the hollow tubular segment has an inner volume of between 130 mm3 and 200 mm3. (claim 8). an inner volume of 170 mm3 falls within this range.
Regarding Claim 27: Lhaou claims a distance between the perforations of the ventilation zone and a downstream end of the rod of aerosol- generating substrate is between 1 millimeter and 6 millimeters. (claim 9).
Regarding Claim 28: Lhaou claims a distance between the perforations of the ventilation zone and a downstream end of the aerosol- generating article is between 10 millimeters and 26 millimeters. (claim 10)
Regarding Claim 29: Lhaou claims the perforations are configured to allow ambient air to be drawn into the ventilation zone. (claim 11)
Regarding Claim 30: Lhaou claims a ratio of ambient air drawn into the ventilation zone through the perforations and air drawn into the ventilation zone through the rod of aerosol-forming substrate is between 5 percent and 75 percent. (claim 12)
Regarding Claim 31: Lhaou claims a filter plug downstream of the ventilation zone, wherein a resistance-to-draw of the filter plug is between 5 millimeters H20 and 80 millimeters H20. (Claim 13)
Regarding Claim 32: Lhaou claims a substrate wrapper at least partly circumscribing the rod of aerosol-forming substrate, wherein the substrate wrapper has a thickness of 50 micrometers or more. (claim 14)
Regarding Claim 33: Lhaou claims An aerosol-generating system comprising an aerosol-generating device having a cavity configured to receive the aerosol-generating article. (claim 15)
This is a provisional obvious type nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claims 15-22, 27, 29, and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (US 10617149B2) in view of Meisner (EP 2671462 A1) English machine translation relied, Nakano (US 20150374041 A1), and Huang (CN 204212004 U), English machine translation relied upon.
Regarding Claim 15, Malgat teaches an aerosol-generating article, comprising:
a rod of aerosol-generating substrate (20, FIG 1, see e.g., column 11 lines 55-60) comprising between 5 percent to 30 percent aerosol former by weight on a dry weight basis (see e.g., column 7 lines 20-25); and
a ventilation zone arranged downstream of the rod of aerosol-generating substrate (e.g., see column 2 lines 57-65, highly perforated wrapper around hollow acetate tube downstream of aerosol forming substrate rod, see also rod in FIG 1) , wherein
the ventilation zone is arranged in a hollow tubular segment of a cardboard aerosol- cooling element (the hollow tubular segment (support element or hollow tubular element, column 8 line 1-2) can be cardboard (column 7 line 63).
the ventilation zone is configured as a hollow tubular ventilation zone (see FIG 1 and column 2 lines 57-65), wherein
the ventilation zone comprises perforations (highly perforated wrapper around hollow tubular ventilation zone, see column 2 lines 57-65), wherein
Malgat teaches one or more of the perforations (e.g., highly perforated, column 2 line 52), however Malgat is silent to suitable shapes of the perforation cross sections and therefore fails to explicitly disclose the perforations have a non-circular cross-section having an ovality and further is silent to suitable diameters of the perforations.
However, Meisner teaches wrappers for similar aerosol generating articles and teaches perforation hole patterns can be cut with lasers into the wrapper [0057], and that the suitable shapes for the holes that make up the perforations in the ventilation zone in wrappers in such articles can be round or oval shaped [0046]. Meisner also teaches slit shaped holes [0032], see also FIG 3. Meisner teaches that perforations are important to modify the overall ventilation of cigarettes and the ventilation provided by these perforations can change the amount of condensate, nicotine, and carbon monoxide in the smoke as a result dependent variable [0005], [0008].
Therefore, it would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the shape of the perforation holes of Malgat to have a shape of oval or slit as taught by Meisner, because both Malgat and Meisner are directed to smoking devices with perforated holes for ventilation in aerosol generating articles, Malgat is silent in regards to suitable shapes for the perforation holes for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable shapes for perforation ventilation holes for a similar article. Meisner teaches known shapes of ventilation holes for a similar article and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Additionally, it would be obvious to a person of ordinary skill in the art to modify the perforations of Malgat with the teachings of Meisner, in order to modify the overall ventilation of cigarettes and the ventilation provided by these perforations, which can change the amount of condensate, nicotine, and carbon monoxide in the smoke as a result dependent variable [0005], dependent on the degree of ventilation provided [0008].
Alternatively, regarding the shape of the perforation holes being non-circular and having an ovality, it would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the perforations of Malgat to any shape including oval as an obvious engineering design choice
Additionally, it would be obvious for those perforations to have a non-circular cross-section having an ovality, the ovality being a ratio of a large diameter of a perforation divided by a small diameter of the perforation, of at least 1.5. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B. More specifically, the courts have held changes in shape and aesthetic design changes to be prima facie obvious, see In re Seid, 161 F.2d 229, 73 USPQ431 (CCPA 1947) and In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), MPEP 2144.04.
Malgat is silent to a suitable thickness of the peripheral wall of the ventilation zone and therefore Malgat fails to disclose a thickness of the peripheral wall of the ventilation zone is between 0.1 millimeter and 2.5 millimeters
However, Nakano teaches ventilation zones for a similar aerosol generating article with a similar ventilation zone and teaches a thickness of the peripheral wall of the ventilation zone is between 0.75 mm or more and 3.0 mm [0067], which overlaps with the claimed range of between 0.1 millimeter and 2.5 millimeters, In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). see also FIG 3), Additionally it would be obvious for those perforations to have any shape as an obvious engineering design choice. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B. Therefore it would be obvious to modify the holes to a shape such as a non-circular cross-section having an ovality, the ovality being a ratio of a large diameter of a perforation divided by a small diameter of the perforation, of at least 1.5. (E.g it would be obvious to select 2 mm for the large dimension and 1 mm for the small dimension resulting in an oval with an ovality ratio of 2 which falls within the claimed ratio.)
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the peripheral wall of the ventilation zone of Malgat, to have a thickness of between 0.75 mm and 3 mm as taught by Nakano, because both Malgat and Nakano are directed to ventilation zones for smoking articles comprising hollow tubular ventilation zones members with peripheral walls, Malgat is silent in regards to suitable thicknesses for use in these ventilation zones and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for a ventilation zone in a similar smoking article, Nakano teaches known thicknesses for ventilation zones, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Modified Malgat teaches a wrapper with one or more perforations as set forth above, however Malgat is silent to suitable dimensions for the perforations or the thickness of the wrapper with the perforations, thus Malgat fails to teach (1) one or more perforations have a width of between 0.05 millimeter and 0.2 millimeter, and wherein (2) one or more perforations have a length of between 0.25 millimeter and 1.0 millimeter.
Regarding (1) and (2), Huang teaches the perforations should have a hole size of 0.01 mm to 0.5 mm [0016] to dilute and reduce tar in the cigarette (smoke) [0019]-[0020]. Therefore, a person of ordinary skill in the art would be motivated to modify the perforations of Malgat with the perforation size taught by Huang of 0.01 mm to 0.5 mm [0008] to dilute and reduce tar in the cigarette (smoke) [0020].
It would be obvious to modify the laser cut slit width of the perforations to be 0.05 mm to 0.5 mm as taught by Huang to dilute and reduce tar, which overlaps with the claimed range of the perforations have a width of between 0.05 mm to 0.2 mm.
It would be obvious to modify the laser cut slit length of the perforations to be between 0.05 and 0.5 mm as taught by Huang to dilute and reduce tar, which overlaps with the claimed range of the perforations have a length of between 0.25mm and 1 mm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 16, modified Malgat teaches the claim limitations as set forth above. Additionally, Huang teaches the perforations should have a width size of 0.01 mm to 0.5 mm [0016] which overlaps with the claimed range of the one or more perforations have a width of between 0.05 mm to 0.2 mm. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 17, modified Malgat teaches the claim limitations as set forth above. Additionally, Huang teaches the perforations should have a width size of 0.01 mm to 0.5 mm [0016] which overlaps with the claimed range of the one or more perforations has a length of between 0.5 millimeter and 0.6 millimeter. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 18, modified Malgat teaches the claim limitations as set forth above. Additionally, Meisner teaches the perforations can be oval [0046].
Regarding Claim 19, modified Malgat teaches the claim limitations as set forth above. Additionally, Meisner teaches the perforations can be elongated slit shaped holes [0032].
Regarding Claim 20, modified Malgat teaches the claim limitations as set forth above. Addiitonally, Meisner teaches the perforations can be elongated slit shaped holes [0032], see also FIG 1, example elongated slit perforations 104.
Regarding Claim 21, modified Malgat teaches the claim limitations as set forth above. Additionally, Meisner teaches for one or more of the perforations, a longitudinal axis of the perforation is parallel to a longitudinal axis of the aerosol-generating article (a longitudinal axis (width dimension) of the perforation is parallel to the longitudinal axis of the aerosol generating article. (See [0043], and FIG 1 (104), the slit/perforation lengths are in the circumferential direction so the width of the slit is in the longitudinal direction/axis).
Regarding Claim 22, modified Malgat teaches the claim limitations as set forth above. Additionally, Meisner teaches the perforations can be oval [0046]. Meisner fails to teach “ovality”. However, it would be obvious to a person of ordinary skill in the art to change the size of the oval perforations taught by Meisner to be any size as desired. Ovality is merely a measurement of the ratio between the size of the length and size of the width of the holes. It would be obvious for a person of ordinary skill in the art to change the size of the length and width of the holes respectively to achieve an ovality of 2 as claimed. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding Claim 27, modified Malgat teaches the claim limitations as set forth above.
Malgat teaches perforations in the ventilation zone as set forth above, and additionally teaches perforations near the downstream end or distal end of the smoking device (column 2 lines 39-50).
However, Malgat is silent to a suitable distance between the perforations and the downstream end of the rod of aerosol generating substrate, and therefore fails to teach a distance between the perforations of the ventilation zone and a downstream end of the rod of aerosol- generating substrate is between 1 millimeter and 6 millimeters.
However, adjusting the distance between the perforation pattern is merely a change in size. It would be obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the distance between the ventilation zone and a downstream end of the rod of aerosol generating material as a size change preference. More specifically it would be obvious to a person of ordinary skill in the art to modify the size of the distance between the perforations and a downstream end of the rod of aerosol- generating substrate to be between 1 millimeter and 6 millimeters. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding Claim 29, modified Malgat teaches the claim limtations as set forth above. Additionally, Malgat teaches the perforations are configured to allow ambient air to be drawn into the ventilation zone. (see column 11 lines 65- column 12 line 1, the outer wrapper is highly perforated paper that provides little or no air resistance for (ambient) air to flow through the paper),
Regarding Claim 33, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches an aerosol-generating system comprising an aerosol-generating device having a cavity configured to receive the aerosol-generating article according to claim 15 (see FIG 3 of Malgat which receives the aerosol generating article).
Claims 23-26 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (US 10617149B2), Malgat (US 10617149B2) in view of Meisner (EP 2671462 A1) English machine translation relied, Nakano (US 20150374041 A1), and Huang (CN 204212004 U), English machine translation relied upon, as applied to claim 15 above, and further in view of Adams (US5666976A)
Regarding Claim 23, modified Malgat teaches all of the claim limitations as set forth above. Additionally, Malgat teaches the device includes a hollow tubular ventilation zone as set forth above however Malgat is silent to a suitable inner diameter of the hollow tubular ventilation zone that is suitable for smoke flow and therefore fails to teach the inner diameter of the hollow tubular ventilation zone is between 2.5 millimeter and 5.0 millimeters.
However, Adams teaches a similar smoking device with a similar hollow tubular ventilation zone (free flow filter 96, see column 7 lines 47-40) and teaches the inner diameter of the hollow tubular ventilation zone is between 2 millimeters and 6 millimeters (column 7 line 48) which overlaps with the claimed range of between 2.5 millimeter and 5.0 millimeters. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the inner diameter of the hollow tubular ventilation zone of Malgat to have a diameter of 2 to 6 millimeters as taught by Adams because both Malgat and Adams are directed to smoking devices comprising hollow tubular channels, Malgat is silent in regards to suitable diameters for use in hollow tubular portions and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for such channels in a similar smoking article, Adams teaches known thicknesses for a similar hollow tubular ventilation zone, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 24, modified Malgat teaches all of the claim limitations as set forth above. Additionally, Malgat teaches the device includes a hollow tubular ventilation zone as set forth above however Malgat is silent to suitable inner diameters of the hollow tubular ventilation zones and therefore fails to teach the inner diameter of the hollow tubular ventilation zone is 3.3 millimeters.
However, Adams teaches a similar smoking device with a similar hollow ventilation zone and teaches the inner diameter of the hollow tubular ventilation zone should be between 2 millimeters and 6 millimeters (see column 7 line 48) which overlaps with the claimed range of 3.3 millimeters. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Therefore it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the inner diameter of the hollow tubular ventilation zone of Malgat to have a diameter of 2 to 6 millimeters as taught by Adams because both Malgat and Adams are directed to smoking devices comprising hollow tubular members, Malgat is silent in regards to suitable diameters for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for a similar smoking article, Adams teaches known thicknesses for a similar hollow tube, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 25, modified Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches the length of the ventilation zone/hollow tubular element 30 is 5 mm to 15 mm long (hollow tubular support element, column 8 lines 14-15).
Malgat teaches the ventilation zone is arranged in a hollow tubular segment of an aerosol- cooling element (e.g., see column 2 lines 57-65, highly perforated wrapper around hollow acetate tube downstream of aerosol forming substrate rod, see also rod in FIG 1) and wherein
However, Malgat is silent to the length or volume of the hollow tubular element. Therefore, Malgat alone fails to disclose the hollow tubular segment has an inner volume of between 130 mm3 and 200 mm3.
Specifically, Malgat teaches the hollow tubular element section 30 is 7 mm to 15 mm long (hollow tubular support element, column 8 lines 14-15). However, Malgat is silent to the volume or diameter of this cylindrical hollow tubular support section 30 which is necessary in order to calculate the volume of the cylinder of Malgat.
However, Adams teaches a similar smoking device with a hollow tubular ventilation zone and teaches suitable inner diameters for such hollow tubular zones and teaches the inner diameter of the hollow tubular ventilation zone is between 2 millimeters and 6 millimeters (see column 7 line 48). Thus, Malgat in view of Adams teaches the volume of the hollow tubular element can range from 15.7 mm3 to about 424.1 mm3. Which overlaps with the claim limitation the hollow tubular segment has an inner volume of between 130 mm3 and 200 mm3. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the inner diameter of the hollow tubular ventilation zone of Malgat to have a diameter of 2 to 6 millimeters as taught by Adams because both Malgat and Adams are directed to smoking devices comprising hollow tubular members, Malgat is silent in regards to suitable diameters for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for a similar smoking article, Adams teaches known thicknesses for a similar hollow tube, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Regarding Claim 26, modified Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches the length of the ventilation zone/hollow tubular element 30 is 5 mm to 15 mm long (hollow tubular support element, column 8 lines 14-15).
Malgat teaches the ventilation zone is arranged in a hollow tubular segment of an aerosol- cooling element (e.g., see column 2 lines 57-65, highly perforated wrapper around hollow acetate tube downstream of aerosol forming substrate rod, see also rod in FIG 1) and wherein
However, Malgat is silent to the length or volume of the hollow tubular element. Therefore, Malgat alone fails to disclose the hollow tubular segment has an inner volume of 170 mm3.
Specifically, Malgat teaches the hollow tubular element section 30 is 7 mm to 15 mm long (hollow tubular support element, column 8 lines 14-15).
However, Malgat is silent to the volume or diameter of this cylindrical hollow tubular section 30 which is necessary in order to calculate the volume of the cylinder of Malgat.
However, Adams teaches a similar smoking device with a hollow tubular ventilation zone and teaches suitable inner diameters for such hollow tubular zones and teaches the inner diameter of the hollow tubular ventilation zone is between 2 millimeters and 6 millimeters (see column 7 line 48). Thus, Malgat in view of Adams teaches the volume of the hollow tubular element can range from 15.7 mm3 to about 424.1 mm3 the claim limitation the hollow tubular segment has an inner volume of 170 mm3, falls within this range.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the inner diameter of the hollow tubular ventilation zone of Malgat to have a diameter of 2 to 6 millimeters as taught by Adams because both Malgat and Adams are directed to smoking devices comprising hollow tubular members, Malgat is silent in regards to suitable diameters for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses for a similar smoking article, Adams teaches known thicknesses for a similar hollow tube, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claim 28 are rejected under 35 U.S.C. 103 as being unpatentable over Malgat (US 10617149B2) in view of Meisner (EP 2671462 A1) English machine translation relied, Nakano (US 20150374041 A1), and Huang (CN 204212004 U), English machine translation relied upon as applied to claim 15 above, and further in view of Besso (US 20180271143 A1).
Regarding Claim 28, Malgat teaches the claim limitations as set forth above. Additionally, Malgat teaches perforations in the ventilation zone as set forth above, and additionally teaches perforations near the downstream end or distal end of the smoking device (column 2 lines 39-50).
However, Malgat is silent to a suitable distance between the perforations and the downstream end of the aerosol generating article, and therefore fails to teach a distance between the perforations of the ventilation zone and a downstream end of the aerosol generating article is between 10 millimeters and 26 millimeters.
Besso teaches a similar perforated smoking device (see FIG 1) and teaches suitable positioning of perforations relative to the mouth end or downstream end of the rod of aerosol generating material and teaches the perforations are 2 to 20 mm upstream from the mouth end of the ventilation zone ([0052], see also [0054] the ventilation zone is the portion with perforations, see also FIG 1), which overlaps the claimed range, In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). Besso teaches that having the perforations this range from the downstream end of the aerosol generating device is preferred because this provides an appropriate length of hollow tube for ventilation air and mainstream smoke to mix before they reach the mouth end of the smoking article.
It would be obvious for a person of ordinary skill in the art to modify the perforations of modified Malgat with the teachings of Besso to provide an appropriate length of hollow tube for ventilation air and mainstream smoke to mix before they reach the mouth end of the smoking article.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat (US 10617149B2) Meisner (EP 2671462 A1) English machine translation relied, Nakano (US 20150374041 A1), and Huang (CN 204212004 U), English machine translation relied upon as applied to claim 29 above, and further in view of Hepworth (CN111787815A, US patent publication US 2021000169A1 relied upon for English translation)
Regarding Claim 30, modified Malgat teaches all of the claim limitations as set forth above. However, Malgat is silent to a suitable ratio of ambient air drawn into the ventilation zone and air drawn into the ventilation zone through the rod of the aerosol forming substrate. Thus, Malgat fails to explicitly disclose the ratio of ambient air drawn into the ventilation zone and air drawn into the ventilation zone through the rod of the aerosol forming substrate.
However, Hepworth also teaches a smoking device with a ventilation area and teaches that a suitable ratio of ambient air drawn into the ventilation zone through the perforations and air drawn into the ventilation zone through the rod of aerosol-forming substrate is between 5 percent and 75 percent.
Specifically, Hepworth teaches the ratio of the ambient air drawn into the ventilation zone through the perforations and air drawn into the ventilation zone through the rod of aerosol-forming substrate is at least 15% [0079] and further teaches the ventilation ratio is between 50% and 85% [0080], which overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the ventilation ratio of Malgat to have a ratio of ambient air drawn into the ventilation zone through the perforations and air drawn into the ventilation zone through the rod of aerosol forming substrate of at least 15% or more specifically between 50% and 85% as taught by Hepworth because both Malgat and Hepworth are directed to smoking articles comprising perforated ventilation zones with ambient air being drawn in, Malgat is silent in regards to suitable ventilation ratios for use, and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable ventilation ratios for a similar smoking article. Hepworth teaches known ventilation ratios for a similar smoking device, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat (US 10617149B2) Meisner (EP 2671462 A1) English machine translation relied, Nakano (US 20150374041 A1), and Huang (CN 204212004 U), English machine translation relied upon as applied to claim 15 above, and further in view of Gambs (US 20150289562 A1).
Regarding Claim 31, modified Malgat teaches all of the claim limitations as set forth above. Additionally, Malgat teaches RTD through the aerosol forming substrate but is silent to a suitable RTD through the filter downstream of the ventilation zone.
However, Gambs teaches similar ventilated smoking article that includes a ventilation area and a filter plug downstream of the ventilation zone, wherein a resistance to draw of the filter plug is between 5 millimetres H2O and 80 millimetres H2O.
Specifically, Gambs teaches the filter segment that follows the ventilation area has a RTD of 40 mm WG to 100 mm WG (mmH2O) (see [0028], and [0063], which overlaps with the claimed range of between 5 millimetres H2O and 80 millimetres H2O. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the filter of Malgat to have a RTD of 40 mmH2O to 100 mmH2O as taught by Gambs, because both Malgat and Gambs are directed to smoking articles comprising ventilation zones, Malgat is silent in regards to suitable RTD following the ventilation zone through the filter and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable resistance to draw for a similar filter in a similar smoking article, Gambs teaches known RTD for a similar filter downstream of a ventilation zone, and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Malgat (US 10617149B2), Meisner (EP 2671462 A1) English machine translation relied, Nakano (US 20150374041 A1), and Huang (CN 204212004 U), English machine translation relied upon, as applied to claim 15 above, and further in view of Campitelli (WO2020127116A2, US pub US 20220007710A1 relied upon).
Regarding Claim 32, modified Malgat teaches all of the claim limitations as set forth above. Additionally, Malgat teaches a substrate wrapper at least partially circumscribes the rod of aerosol forming substrate (See FIG 1-2 part 60, wrapper illustrated circumscribing rod, and column 13 lines 5-15) however Malgat is silent to a suitable thickness of wrapper for use.
However, Campitelli teaches suitable thicknesses for wrappers for use in aerosol generating articles and teaches the substrate wrapper has a thickness of 50 micrometers or more.
Specifically, Campitelli teaches the wrapper has a thickness of 10 to 100 micrometers [0345] which overlaps the claimed range of 50 micrometers or more. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the wrapper of Malgat to have a thickness of 10 to 100 micrometers as taught by Campitelli, because both Malgat and Campitelli are directed to smoking articles with wrappers, Malgat is silent to suitable thicknesses of wrappers for use and one of ordinary skill in the art would be motivated to look to a similar reference to find suitable thicknesses of wrappers for a similar smoking article. Campitelli teaches known wrapper thicknesses for use and this merely involves applying suitable characteristics to a similar product with a reasonable expectation of success.
Conclusion
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755