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 2, 6 and 11 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.
Regarding claim 2, the claim requires first and second radial surfaces to be opposite each other. However, it is unclear how radially opposite surfaces are positioned. Does this mean that they are located facing each other, does it mean that they are located at different points along a specific circumference, and does it require the surfaces themselves to be curved? The claim is therefore indefinite. For the purposes of this Office action, the claim will be interpreted as if it required the first and second surfaces to be opposite each other. Claim 6 is indefinite by dependence.
Regarding claim 11, it is unclear whether the claim requires the functional member to change shape or whether it refers to alternative dimensions of different functional members that have fixed shapes. The claim is therefore indefinite. For the purposes of this Office action, the claim will be interpreted as if recited alternative dimensions of functional members with different shapes, and that only shape and associated dimensions are required to meet the claim.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8-9 and 11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hepworth (US 2025/0107564).
Regarding claim 1, Hepworth discloses a capsule ([0044], figure 3, reference numeral 15), which is considered to meet the claim limitation of a functional member, embedded within a body of material ([0134], figure 3, reference numeral 4’’). The body is a filter [0026], which is considered to meet the claim limitation of a filter member. The area with no filter material that is instead occupied by the capsule is considered to meet the claim limitation of a receiving space. The capsule is in contact with the filter (figure 3).
Regarding claim 2, Hepworth discloses that the void space of the filter has sides that are opposite each other, and that the capsule is located between those sides (figure 2).
Regarding claim 3, Hepworth discloses that the capsule is in contact with the filter (figure 3), which is considered to meet the claim limitation of abutting.
Regarding claim 4, Hepworth discloses that the capsule is in contact with the filter (figure 3), which is considered to meet the claim limitation of interference fit. It is evident that some portion of the void space of the filter has a dimension that has the claimed ratio with a dimension of the capsule.
Regarding claim 5, Hepworth discloses that the void has a circular shape (figure 3). A chord of one side of the void is considered to meet the claim limitation of a groove, and the functional member is located within all of the chords of the void of the filter (figure 3).
Regarding claim 8, Hepworth discloses that the capsule is formed from a solid frangible shell, which is considered to meet the claim limitation of a housing, that surrounds a liquid payload [0044], which is considered to meet the claim limitation of a functional portion. The shell abuts the filter (figure 3). It is evident that there must be a level of applied force at which the capsule shell breaks because it doesn’t break instantly upon any movement or contact of the article. The body is formed from sheet material [0027] that is PLA [0054], which one of ordinary skill in the art would recognize allows a compressive force to be applied to in the radial direction to break the capsule since PLA is known to be compressible and must have some air space to allow smoke to flow through the filter.
Regarding claim 9, it is evident that some of the liquid payload would be absorbed by the filter material once the shell is broken since gravity would cause some of the liquid to move in to whichever part of the filter is located below the capsule at the moment the capsule is broken.
Regarding claim 10, Hepworth discloses that the capsule is spherical [0046].
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.
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 6-7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (US 2025/0107564).
Regarding claims 6-7 and 10, Hepworth discloses all the claim limitations as set forth above. Hepworth does not explicitly disclose the claimed sizes.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the claimed components have the claimed dimensions. One would have been motivated to do so since there is no evidence of record that the specific dimensions are critical. A change in size or proportion 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.
Claims 12, 17-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (US 2025/0107564) in view of Malgat (US 11,083,213).
Regarding claim 12, Hepworth discloses an article comprising a wrapper ([0092], figure 3, reference numeral 10) and tipping paper ([0083], figure 3, reference numeral 5). The article has an outer circumference [0081], indicating that the wrapper and tipping together define an outer tube with an accommodating space inside. A cylindrical rod of aerosol generating material that provides an aerosol when heated is located within the wrapper ([0022], figure 3, reference numeral 3), which is considered to meet the claim limitation of a smoke generating member. A cooling section is located adjacent to the aerosol generating material ([0134], figure 3, reference numeral 13), which is considered to meet the claim limitation of a cooling member. A body is a filter [0026], which is considered to meet the claim limitation of a filter member, has a capsule ([0044], figure 3, reference numeral 15), which is considered to meet the claim limitation of a functional member, embedded within the body of material ([0134], figure 3, reference numeral 4’’). The area with no filter material that is instead occupied by the capsule is considered to meet the claim limitation of a receiving space. The capsule is in contact with the filter (figure 3). Hepworth does not explicitly disclose a closing member.
Malgat teaches an aerosol generating article (abstract) having a plug element (figure 2, reference numeral 91) adjacent to an aerosol forming substrate (column 13, lines 9-20, figure 2, reference numeral 20) that covers the distal end of the article to provide a pleasant appearance and information regarding the article (column 44-60), which is considered to meet the claim limitation of a closing member.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the distal end of the article of Hepworth with the plug element of Malgat. One would have been motivated to do so since Malgat teaches a plug element that provides a pleasant appearance and information regarding the article.
Regarding claims 17-18 and 20, modified Hepworth teaches all the claim limitations as set forth above. Modified Hepworth does not explicitly teach the claimed sizes.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the claimed components have the claimed dimensions. One would have been motivated to do so since there is no evidence of record that the specific dimensions are critical. A change in size or proportion 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.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (US 2025/0107564) in view of Malgat (US 11,083,213) as applied to claim 12 above, and further in view of Raichman (US 10,721,967) and Barron (US 2014/0041655).
Regarding claim 13, modified Hepworth teaches all the claim limitations as set forth above. Hepworth additionally discloses that the cooling section defines an open passage and that it is located between and abuts the aerosol forming substrate and filter portions. Modified Hepworth does not explicitly teach (a) an air permeable sealing portion located between the substrate and the cooling section and (b) an air permeable sealing portion located between the cooling portion and the filter member.
Regarding (a), Raichman teaches a capsule (figure 4A, reference numeral 29) having upper and lower meshes (figure 4A, reference numeral 30) that surround a material (column 7, lines 35-61, figure 4B, reference numeral 32) so that the material does not leave the capsule (column 7, lines 62-67, column 8, lines 1-3).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide meshes at the ends of the aerosol forming substrate of modified Hepworth. One would have been motivated to do so since Raichman teaches providing meshes so that material does not fall out.
Regarding (b), Barron teaches a portable vaporizer (abstract) having a filter (figure 5, reference numeral 504) and a filter screen located immediately downstream of it ([0073], figure 5, reference numeral 503) so that vaporized oils and large particles are filtered out of the vapor [0077].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a filter screen between the cooling section and filter of modified Hepworth. One would have been motivated to do so since Barron teaches a filter screen that filters vaporized and large particles.
Regarding claim 14, Barron teaches that the mesh has a mesh number [0077], indicating that it has holes.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (US 2025/0107564) in view of Malgat (US 11,083,213) as applied to claim 12 above, and further in view of Akhmetshin (US 2007/0119467).
Regarding claim 15, modified Hepworth teaches all the claim limitations as set forth above. Modified Hepworth does not explicitly teach a mark corresponding to the capsule.
Ahkmetshin teaches a filter tipped cigarette containing capsules that rupture upon the application of mechanical force (abstract) and has at least one mark on the surface of the filter to indicate the location of the capsules for user convenience [0083], which is considered to meet the claim limitation of an avoidance mark.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine article of modified Hepworth with the mark of Ahkmetshin. One would have been motivated to do so since Ahkmetshin teaches a mark that indicates to a user the location of rupturable capsules within a cigarette filter for convenience.
Regarding claim 16, modified Hepworth teaches all the claim limitations as set forth above. Modified Hepworth does not explicitly teach marks corresponding to the capsule.
Ahkmetshin teaches a filter tipped cigarette containing capsules that rupture upon the application of mechanical force (abstract) and has at least one mark on the surface of the filter to indicate the location of the capsules for user convenience [0083]. Two markers are present on opposite sides of the filter ([0084], figure 9, reference numeral 14). The vertical direction of the filter is opposite to the lengthwise direction (figure 9), which is considered to meet the claim limitation of an extending direction.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine article of modified Hepworth with the mark of Ahkmetshin. One would have been motivated to do so since Ahkmetshin teaches marks that indicate to a user the location of rupturable capsules within a cigarette filter for convenience.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hepworth (US 2025/0107564) in view of Malgat (US 11,083,213) as applied to claim 12 above, and further in view of Ma (CN 211129720, machine translation relied upon).
Regarding claim 19, modified Hepworth teaches all the claim limitations as set forth above. Modified Hepworth does not explicitly teach a decorative member running the length of the article.
Ma teaches a smoking generating product [0002] in the form of a rod that is wrapped with a forming paper on its outside to ensure a consistent shape ([0050], figure 1, reference numeral 30), which is considered to meet the claim limitation of a decorative member.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to sleeve the outside of the article of modified Hepworth with the forming paper of Ma. One would have been motivated to do so since Ma teaches a paper that ensures a consistent shape.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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