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 .
Status of the Claims
Claims 2-7 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 2-4 and 7 are rejected under pre-AIA 35 U.S.C. 103 as being unpatentable over Malgat et al. (US 20160331031 A1) in view of Nappi et al. (WO2017148773A1).
Regarding claim 2, Malgat directed to a heated aerosol-generating article (Abstract) discloses an aerosol-generating article comprising an aerosol-forming substrate (sheets of homogenized tobacco material; [0048]); a substrate portion containing aerosol-forming substrate in a form of a rod ([0054]; [0060]);
wherein the substrate portion has a length of between about 5 millimeters and about 30 millimeters ([0026]). Malgat’s substrate portion length range partially overlaps the claimed range of the substrate portion length between 20 millimeters and 60 millimeters, and is therefore considered prima facie obvious.
Malgat further discloses a substrate portion has a diameter of between 5 millimeters and 10 millimeters depending upon their intended use ([0024]). The range disclosed by the prior art overlaps the claimed range of the substrate portion having a diameter between 4 millimeters and 7 millimeters, and is therefore considered prima facie obvious.
Malgat further discloses that the aerosol-forming substrate comprises an aerosol former such as glycerin ([0053]), and an amount of the aerosol former content ranges between about 5 percent and 30 percent by weight on a dry weight basis of the aerosol-forming substrate ([0053]). The range disclosed by the prior art overlaps the claimed range of the amount of aerosol former being between 6 percent and 20 percent by weight, and is therefore considered prima facie obvious.
Malgat further discloses a hollow cellulose acetate tube 1030 ([0075]); and a mouthpiece filter ([0079] - [0080]; FIGs. 2-3).
Malgat doesn’t explicitly disclose an additional filter section is included between the substrate portion and the hollow acetate portion.
Nappi directed to a smoking article (Abstract), discloses a smoking article comprising a tobacco rod 12 (i.e., substrate portion containing aerosol-forming substrate), a filter 14 and a hollow tube segment 24 (page 11; line 15-20; see Figure 2-3). Nappi further discloses a filter 14 comprising a hollow tube segment 24, a first filter segment 20, and a rod end filter segment 18. The upstream end of the hollow tube segment 22 abuts the downstream end of the first filter segment 20. The upstream end of the first filter segment 20 abuts the downstream end of the rod end filter segment 18. The upstream end of the rod end filter segment 18 abuts the tobacco rod 12. As shown in the Annotated Figure 1 below, filter segments 18 and 20 are positioned between a substrate portion and a hollow tube segment. The hollow tube segment 22 is formed from cellulose acetate (page 12, line 9).
Nappi further express the need to provide a filtered smoking article with a mouth end cavity 26 structure which has an improved moisture resistance and therefore an increased resistance to deformation during smoking (page 2, line 1-7).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Malgat by positioning additional filter section in between a substrate portion and a hollow acetate tube as taught by Nappi, because both Malgat and Nappi are directed to aerosol generating articles utilizing filters and a hollow tube, Nappi teaches specific allocation of filter sections to a smoking article in order to achieve a sufficiently high resistance to deformation, and this involves applying a known teaching to a similar smoking article to yield predictable results.
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Regarding claim 3, Malgat discloses an aerosol-generating article further comprising a wrapper of metallic foil or aluminum co-laminated paper ([0018]; [0060]; [0077]; [0080]).
Regarding claim 4, Malgat discloses that a substrate portion has a diameter of between 5 millimeters and 10 millimeters depending upon their intended use ([0024]). The range disclosed by the prior art overlaps the claimed range of the substrate portion having a diameter between 5 millimeters and 7 millimeters, and is therefore considered prima facie obvious.
Regarding claim 7, Malgat doesn’t explicitly disclose a tipping paper arranged at least partly wrapped around the hollow acetate tube and the substrate portion to overlap the hollow acetate tube and the substrate portion.
Nappi discloses that a filter comprising a combining plug wrap is attached to the tobacco rod by a band of substantially impermeable tipping paper (Page 9, line 19-20). The band of tipping paper extends over the whole length of the filter and over a portion of the tobacco rod (i.e., substrate portion) (page 9, line 24-25). Nappi further disclosed that the band of tipping paper 16 circumscribes the filter 14
and the substrate portion to join together the two portions of the smoking article 10 (page 11, line 17-19).
As shown in figures 2-3, Nappi’s filter 14 includes the hollow tube segment 22(i.e., hollow acetate tube) as its most downstream (closer to the mouth end) portion, Nappi’s tipping paper necessarily overlaps both the hollow tube segment and the substrate portion, as recited in claim 7.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Malgat’s aerosol generating article by providing a tipping paper to wrap around and connect its hollow acetate tube and its substrate portion as taught by Nappi, because both Malgat and Nappi are directed to aerosol generating articles, Nappi teaches a tipping paper to combine or join two portions of the smoking article, and this involves applying a known teaching to a similar aerosol generating article to yield predictable results.
Claims 5-6 are rejected under pre-AIA 35 U.S.C. 103 as being unpatentable over Malgat in view of Nappi, and further in view of Li et al. (US 20150027454 A1).
Regarding claim 5, Malgat discloses an aerosol generating article is about 45 millimeters in length and has an outer diameter of about 7.2 millimeters and an inner diameter of about 6.9 millimeters ([0076]).
Malgat discloses a hollow acetate tube ([0075]; [0080]), but is silent regarding the inner diameter of the hollow acetate tube.
Li directed to an electronic smoking article (Abstract), discloses a hollow acetate tube (a tubular filter segment 600 is a hollow tubular acetate tube [0043]), wherein the hollow acetate tube has an inner diameter of between 1 millimeter to 6 millimeters ([0044]; FIG. 5). Li further teaches that the hollow acetate tube (HAT) has an inner diameter of about 5 millimeters ([0065]). The range disclosed by the prior art overlaps the claimed range of the hollow acetate tube having an inner diameter between 3 millimeters and 5 millimeters, and is therefore considered prima facie obvious.
Li further teaches that the inner diameter of the hollow acetate tube is uniform along its length. The inner diameter of the hollow acetate tube also varies along its length. Thus, the aerosol flow can have a straight, bended or twisted path. Different flow paths may contribute to a different degree of potential filtration by impaction and also cooling of the aerosol ([0044]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Malgat’s hollow acetate to tube by adjusting its inner diameter to be between 3 millimeters to 5 millimeters, as taught by Li, because both Malgat and Li are directed to aerosol generating articles utilizing a hollow acetate tube, Li teaches that varied inner diameter of the hollow acetate tube for a smoking article results in different aerosol flow paths that may contribute to a different degree of potential filtration by impaction and also cooling of the aerosol, and this involves applying a known teaching to a similar aerosol generating article, to yield predictable results.
Regarding claim 6, Malgat doesn’t explicitly disclose that a length of the hollow acetate tube is between 5 millimeters to 30 millimeters.
Li teaches that a tubular filter segment 600 (i.e., hollow acetate tube) is about 2 millimeters to about 30 millimeters in length ([0043]). Li further teaches that the hollow acetate tube has a length of about 7 millimeters ([0065]). The range disclosed by the prior art overlaps the claimed range of the hollow acetate tube having a length between 5 millimeters to 30 millimeters, and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Malgat’s hollow acetate to tube by adjusting its length to be between 5 millimeters to 30 millimeters , as taught by Li, because both Malgat and Li are directed to aerosol generating articles utilizing a hollow acetate tube, Li teaches varied length adjustment of the hollow acetate tube for a smoking article may results in different aerosol flow paths that may contribute to a different degree of cooling of the aerosol (Li, [0043]-[0043]), and this involves applying a known teaching to a similar aerosol generating article, to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN G GHEBRESELASSIE whose telephone number is (571)270-0196. The examiner can normally be reached 8am-5pm.
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/HELEN GHEBRESELASSIE/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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