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 Interpretation
Claim 7 recites the limitation “an axial position of the side flow hole is close to one end of the aerosol-forming substrate segment and is away from one end of the filter segment”. Examiner notes that this limitation will be interpreted as “closer to one end of the aerosol-forming substrate segment and further away from one end of the filter segment”.
Claim 8 recites the limitation “the airway segment comprises a first airway segment close to the aerosol-forming substrate segment and a second airway segment close to the filter segment”. Examiner notes that this limitation will be interpreted as the first airway segment being closer to the aerosol-forming substrate segment than the filter segment, and the second airway segment being closer to the filter segment than the aerosol-forming substrate segment.
Claim Rejections - 35 USC § 102
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, 2, and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN 212590231).
Claims 1 and 2. Wang et al. discloses a closed heating type cigarette comprising tobacco section 1 (aerosol-forming substrate segment), a controllable suction resistance section 2 (part of airway segment), and functional filter section 3 comprising a cooling section 3-1 (part of airway segment having an airflow channel axially penetrating the segment) and a filtering section 3-2 (filter segment). Plug 5 (tight segment) is made of airtight material (air permeability is 0) and abuts the upstream end of tobacco section 1 (aerosol-forming substrate segment). The controllable draw-resistance section 2 is a tube body with an axial central cavity 2-1 (airflow channel). The controllable draw-resistance section 2 also includes a restricting flow guiding element 2-3 arranged in the central cavity 2-1 with a number of axial channels, and its porosity is 40% (Figure 1; Page 3, example 1).
Claim 5. Wang et al. discloses that the controllable suction resistance section 2 (part of airway segment) is a tube body (side wall) with an axial central cavity 2-1 (hollow cavity) and cooling section 3-1 (part of airway segment having an airflow channel/hollow channel axially penetrating the segment) (Figure 1; Page 3, example 1).
Claim 6. Wang et al. discloses that the controllable draw-resistance section 2 (part of airway segment) comprises a tube body with an axial central cavity 2-1 and a circumferential side wall through hole 2-2 (side flow hole) formed through the tube body (Figure 1; Page 3, example 1).
Claim 7. Wang et al. discloses that the circumferential side wall through hole 2-2 (side flow hole) is closer to the tobacco section 1 (aerosol-forming substrate segment) than the filtering section 3-2 (filter segment) (Figure 1; Page 3, example 1).
Claim 8. Wang et al. discloses that the controllable draw-resistance section 2 (first airway segment) is adjacent to the tobacco section 1 (aerosol-forming substrate segment) and cooling section 3-1 (second airway segment) is adjacent to the filtering section 3-2 (filter segment) (Figure 1; Page 3, example 1).
Claim 9. Wang et al. discloses that the cross sectional area of the axial central cavity 2-1 (airflow channel) of the controllable draw-resistance section 2 (first airway segment) is smaller than the cross sectional area of the airflow channel formed by the cooling section 3-1 (second airway segment) (Figure 1; Page 3, example 1).
Claim 10. Wang et al. discloses that the controllable suction resistance section 2 (part of airway segment) and cooling section 3-1 (part of airway segment) are cylindrical (Figure 1; Page 3, example 1).
Claims 1-3, 5, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liao et al. (CN 113475784).
Claims 1-3. Liao et al. discloses an aerosol product comprising a lower fixing seat 7 (tight segment), aerosol substrate section 11 (aerosol-forming substrate segment), cooling element 3 (airway segment), and filter element 4 (filter segment). The cooling element 3 (airway segment) may be hollow or provided with multiple gas flow channels (airflow channel) inside. The lower fixing seat 7 (tight segment) is made of high temperature resistant materials such as silica gel, PEEK, metal, etc. (wherein metal is not air permeable) (Figure 5; Pages 4-5).
Claim 5. Liao et al. discloses cooling element 3 (airway segment) may be hollow or provided with multiple gas flow channels inside (Figure 5; Pages 4-5).
Claim 10. Liao et al. discloses cooling element 3 (airway segment) is cylindrical (Figure 5; Pages 4-5).
Claims 1, 4, 5, and 8-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reevell (CN111343874).
Claim 1. Reevell discloses a heated aerosol-generating article 10 comprising a rod of aerosol-generating substrate 12, wherein the rod of aerosol-generating substrate 12 comprises: a first plug of homogenised tobacco material/quick release plug 26 (aerosol-forming substrate segment) and a second plug of homogenised tobacco material 28/slow release plug (tight segment), the first plug/quick release plug 26 (aerosol-forming substrate segment) being provided downstream of the second plug/ slow release plug 28 (tight segment). The aerosol-generating product 10 further comprises a hollow cellulose acetate tube 14, a spacer element 16 (the hollow cellulose acetate tube and spacer element together forming an airway segment having an axially penetrating airflow channel), and a cigarette holder filter 18 (filter segment). Each of the quick release plug 26 and the slow release plug 28 is formed from an aggregated sheet of homogenized tobacco material. The sheets of homogenized tobacco material aggregated to form the slow release plug 28 such that the slow release plug 28 has a density that is at least 30% higher than the density of the fast release plug 26 (wherein the higher density of the slow release plug 28 results in a lower air permeability than the less dense fast release plug 26) (Figures 1 and 2; Page 6).
Claim 4. Reevell discloses that the quick release plug 26 and the slow release plug 28 are formed from an aggregated sheet of homogenized tobacco material. The sheets of homogenized tobacco material are aggregated to form the slow release plug 28 such that the slow release plug 28 has a density that is at least 30% higher than the density of the fast release plug 26 (Figures 1 and 2; Page 6).
Claim 5. Reevell discloses that the hollow cellulose acetate tube 14 and spacer element 16 (together forming an airway segment) comprise a side wall forming a hollow cavity/airflow channel axially penetrating the hollow cellulose acetate tube 14 and spacer element 16 (Figures 1 and 2; Page 6).
Claim 8. Reevell discloses that the hollow cellulose acetate tube 14 (first airway segment) and spacer element 16 (second airway segment) make up the airway segment, wherein the hollow cellulose acetate tube 14 (first airway segment) is adjacent the first plug of homogenised tobacco material/quick release plug 26 (aerosol-forming substrate segment) and the spacer element 16 (second airway segment) is adjacent the cigarette holder filter 18 (filter segment) (Figures 1 and 2; Page 6).
Claim 9. Reevell discloses that the cross sectional area of the airflow channel in the hollow cellulose acetate tube 14 (first airway segment) is smaller than the cross sectional area of the airflow channel in the spacer element 16 (second airway segment) (Figures 1 and 2; Page 6).
Claim 10. Reevell discloses that the hollow cellulose acetate tube 14 and a spacer element 16 (together forming the airway segment) are cylindrical (Figures 1 and 2; Page 6).
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 and 3-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-13 and 15-19 of copending Application No. 18/758745 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application includes all limitations of claims 1 and 3-10 of the instant application in addition to an aerosol-forming device.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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