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 Claims
Claims 1 – 15 are pending and are the subject of 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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1 – 5 and 7 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021123843 A1 (Grishchenko), and further in view of US 20210244077 A1 (Lord).
Regarding claim 1, Grishchenko teaches an article for use in a non-combustible aerosol provision system, the article comprising: an aerosol generating material, and a downstream portion located downstream of the aerosol generating material, wherein the downstream material comprises a body of material comprising cellulose (page 1 lines 17 – 21). The body of material reads on the claim limitation of a filter. Figure 5 of Grishchenko further shows the filter (6) extending along a filter axis and comprising an upstream end, closer to the tubular portion (4a), and a mouth end (6b) closer to the mouth end of the article (2b). Figure 1 of office action below shows the two regions. As the upstream end and mouth end portions are connected they would be in fluid communication and adjacent with
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each other. Grishchenko further teaches that the filter material (6) is manufactured from a sheet material comprising cellulose, and the sheet material may be paper (page 55 lines 11 – 13). And that the filter material is a similar manner to a ‘crepe filter’ (page 24 lines 5 – 6), which reads on the claim [AltContent: textbox (Figure 1 – Figure 5 from WO 2021123843 A1 (Grishchenko). Vertical line on left of image separates upstream end filter portion and mouth end filter portion while horizontal line shows the filter axis.)]limitation of comprising filter paper.
Grishchenko does not teach a hollow inner tube inserted in the upstream end filter portion to extend through the upstream end filter portion and being open at the mouth end filter portion of the filter. Lord teaches an aerosol forming article comprising an aerosol forming substrate (2) and a filter element (4) having a hollow bore (5) extending from the downstream axial end of the substrate to the downstream axial end of the article (paragraph 21; figure 1). Modifying Grishchenko with the bore of Lord would produce a filter containing a hollow inner tube extending through the upstream end filter portion and being open at the mouth end filter portion.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the article of Grishchenko with the hollow of Lord, with reasonable expectation of success, because Lord indicates that the axial bore extending from the downstream axial end of the substrate to the axial downstream (mouth) end of the article provides a space for mixing and cooling of the vapor/aerosol generated by heating of the substrate and also provides a passage of low resistance to help reduce condensation and maximize visible vapor (paragraph 22).
Regarding claim 2, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Grishchenko further teaches that the filter (6) is wrapped in plug wrap (page 19 line 1) which would include the upstream end filter portion. And that the plug wrap (7) has a basis weight ranging from 20 – 110 gsm (page 23 lines 4 – 9). This overlaps the claimed range of above 45 gsm. Overlapping ranges are prima facie evidence of obviousness. See MPEP 2144.05.
Regarding claim 3, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Grishchenko further teaches that the pressure drop across the body of the filter (6) is from 0.2 mmWG/mm axial length up to 2.33 mmWG/mm axial length (page 29 lines 12 – 13).
Regarding claim 4, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Grishchenko further teaches that the filter (6) has a density ranging from 0.05 mg/mm3 to 0.15 mg/mm3 (page 27 lines 34 – 35 and page 28 lines 1 – 2). Since this density is for the entire filter, it includes the density of the upstream end filter portion. A density range of 0.05 mg/mm3 to 0.15 mg/mm3 is within the claimed range of 0.02 mg/mm3 to 0.18 mg/mm3. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
Grischenko does not teach that the filter paper or non-woven sheet surrounds the upstream end filter portion. Figure 1 of Lord shows the filter (4) surrounds the hollow bore (5) from the mouth end (8) to the upstream end (7). Modifying Grischenko with the hollow bore of Lord would produce an article with its upstream end filter surrounding the hollow bore.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the tubular element of Grishchenko with the hollow bore of Lord, with reasonable expectation of success, because Lord indicates that that the axial bore extending from the downstream axial end of the substrate to the axial downstream (mouth) end of the article provides a space for mixing and cooling of the vapor/aerosol generated by heating of the substrate and also provides a passage of low resistance to help reduce condensation and maximize visible vapor (paragraph 22).
Regarding claim 5, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 4. Grishchenko further teaches that the filter (6) is wrapped in a first plug wrap (7) (page 19 line 1; figure 5). As figure 1 of office action shows, the filter (6) comprises both the upstream and mouth end filter portions so they would be wrapped by a common outer wrapper. Grishchenko further teaches that the filter material (6) is manufactured from a sheet material comprising cellulose, and the sheet material may be paper (page 55 lines 11 – 13). And that the filter material is a similar manner to a ‘crepe filter’ (page 24 lines 5 – 6), which reads on the claim limitation of comprising filter paper.
Regarding claim 7, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Figure 5 of Grishchenko shows that the upstream portion and mouth end portions of the filter are adjacent (see figure 1 of office action above).
Grishchenko does not teach that the hollow inner tube opens to an upstream end of the upstream filter portion. Lord teaches an aerosol forming article comprising an aerosol forming substrate (2) and a filter element (4) having a hollow bore (5) extending from the downstream axial end of the substrate to the downstream axial end of the article (paragraph 21; figure 1). Modifying Grishchenko with Lord would produce an inner tube that extends and opens to the upstream end of the upstream filter portion.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the tubular element of Grishchenko with the hollow bore of Lord, with reasonable expectation of success, because Lord indicates that that the axial bore extending from the downstream axial end of the substrate to the axial downstream (mouth) end of the article provides a space for mixing and cooling of the vapor/aerosol generated by heating of the substrate and also provides a passage of low resistance to help reduce condensation and maximize visible vapor (paragraph 22).
Regarding claim 8, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Grishchenko further teaches that the tubular element (20) is manufactured from paper (page 1 line 35, page 55 line 16; figure 5).
Regarding claim 9, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Figure 5 of Grishchenko shows a longitudinal cross section of the aerosol generating article. Based on the shape of the cavity (20) in the longitudinal cross section, a circular or square shape could be observed in a horizontal cross section of the aerosol generating article.
Regarding claim 10, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Lord further teaches that the terminal filter element may include a capsule containing a liquid flavorant (paragraph 115).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the aerosol generating article of Grishchenko with the flavor capsule of Lord, with reasonable expectation of success, because Lord indicates that smoking substitute systems are intended to substitute for the rituals of smoking while providing the user with a similar experience and satisfaction to those experienced with traditional smoking with combustible tobacco products (paragraph 8). Flavorings can help to simulate the traditional smoking experience.
Regarding claims 11 and 12, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 10. Lord further teaches a terminal filter element at the downstream/mouth end of the article/consumable (paragraph 109). The terminal filter element may include a capsule containing a liquid flavorant (paragraph 115).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the aerosol generating article of Grishchenko with the flavor capsule in the mouth end of the filter of Lord, with reasonable expectation of success because Lord indicates that smoking substitute systems are intended to substitute for the rituals of smoking while providing the user with a similar experience and satisfaction to those experienced with transitional smoking with combustible tobacco products (paragraph 8). Flavorings can help to simulate the traditional smoking experience and placing the flavoring in the mouth end of the filter would make them easier to taste.
Regarding claim 13, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Grishchenko further teaches that the article (1) comprises a mouthpiece (2), and a cylindrical rod of aerosol generating material (3) (page 18 lines 4 – 5; figure 5). The end of the aerosol generating material (3) closest to the filter (6) reads on the claim limitation of a downstream end.
Regarding claim 14, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 13. Grishchenko further teaches that the aerosol generating article also includes a tubular portion (4a) formed by a hollow tube, which is also referred to as a cooling element (page 18 lines 30 – 31). Figure 5 shows the tubular element as adjacent to the downstream end of the aerosol generating substrate and arranged between the aerosol generating substrate (3) and the filter (6).
Regarding claim 15, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Grishchenko further teaches that the filter material has a density ranging from 0.05 mg/mm3 to 0.15 mg/mm3 (page 27 lines 34 – 35 and page 28 lines 1 – 2). Since this density range applies to the whole filter paper, it would also apply to the mouth end of the filter. A density range of 0.05 mg/mm3 to 0.15 mg/mm3 is within the claimed range of 0.02 mg/mm3 to 0.17 mg/mm3. If a prior art reference discloses a point or range within the claimed range, the prior art anticipates the claim. See MPEP 2131.03 (I).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2021123843 A1 (Grishchenko), and US 20210244077 A1 (Lord) as applied to claim 1 above, and further in view of WO 2021176527 A1 (Motodamari).
Regarding claim 6, Grishchenko modified by Lord teaches an aerosol generating article as described by claim 1. Grishchenko modified by Lord does not teach that the upstream end filter portion and the mouth end filter portion form separate filter segments individually wrapped by a respective filter wrapper, or that the mouth end filter portion and the upstream filter portion are assembled together by a common outer wrapper. Motodamari teaches a filter, a smoking article including a filter, and a flavor inhalation article including a filter, which are formed from a paper sheet or a nonwoven fabric having enhanced aesthetic appeal and possess appropriate filtration characteristics (paragraph 5 of translation). The filter (114) includes a first filter plug (132) on the mouthpiece side, and a second filter plug (134) on the tobacco rod (12) side (paragraph 40 of translation; figures 2a). The first filter plug (132) has a first filter body (142) and a first roll of paper (144) that wraps around the outer circumference of the first filter body (142) (paragraph 41 of translation; figures 2a). The second filter plug (134) has a second filter body (152) and a second winding paper (154) that wraps around the outer circumference of the second filter body (152) (paragraph 43 of translation; figures 2a). Motodamari further teaches that a molded paper (36) is wound around the outer circumference of the first roll paper (144) and the second roll paper (154), connecting the first roll paper (144) and the second roll paper (154) (paragraph 44 of translation; figures 2a).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the filter of Grishchenko modified by Lord to be a two part filter as in Motodamari, with reasonable expectation of success, because Motodamari indicates that by having two filter sections there are twice as many opportunities to control tar value and other properties by adjusting the material, basis weight, air permeability, crimp depth, void amount, resistance etc. of both he first and second filter bodies (paragraph 97).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brendon Juengst whose telephone number is (571)272-8750. The examiner can normally be reached Mon-Fri 8:30-5.
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/BRENDON THOMAS JUENGST/Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
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