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 .
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 and 11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2 and 11 require the limitation, “wherein the wrapper and the paper are coextensive”. The term coextensive is giving it’s normal definition that the two elements have the boundaries. This contradicts the limitation in independent claims 1 and 8, “a second paper layer disposed about the wrapper and joining the aerosol generating substrate, hollow cellulose acetate tube, hollow tubular segment and mouthpiece together.” A second wrapper that is “coextensive” would not be able to perform the required “joining” of the other elements because it would have the same boundaries as the first wrapper. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 3-5, 8-10, and 12-14, is/are rejected under 35 U.S.C. 103 as being unpatentable over Zuber (US 20160295926 A1) in view of Besso et al. (US 20170215475 A1) and Malgat et al. (US 20160331032 A1).
Regarding claims 1, 3, 5, 8, 12, and 14, Zuber discloses a cigarette and an aerosol generating device with a receptacle with an aerosol generating substrate (see figure 2, element 1020, below) that contains nicotine and glycerine (claims 4 and 5). The substrate is followed by a hollow acetate tube (element 1030, [0061]), a spacer element 1040, and a mouthpiece filter 1050.
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Zuber does not disclose the amount of glycerine, the mouthpiece filter being made of cellulose aetate, and the wrapper parameters or a second wrapper.
Besso et al. disclose a similar smoking article for use with a aerosol generating device similar to that of Zuber. The article of Besso et al. has a tobacco substrate that contains at least 15% humectant (including glycerine, see Abstract, [0053], and [0054]) and discloses that the mouthpiece filter is cellulose acetate [0072].
Furthermore, Besso et al. disclose that the wrapper (see figure 1, element 40) that surrounds the aerosol-forming substrate is specifically selected because, “Paper that is used to wrap the tobacco substrate can absorb humectant, water and other compounds found in the mainstream smoke or aerosol passing through the smoking article…” [0006]. The wrapper preferred by Besso et al. to address these issues has a basis weight of 20-50 grams per square meter, a thickness of 30-80 micrometers [0030], and a permeability of 1 to 10 CORESTA units [0028]. The range of thickness and basis weight encompass the claimed range of 1.0 to 1.2 mucrometers/gsm (i.e. 40 micrometers/40 gsm = 1.0). It would have been obvious to one of ordinary skill in the art at the time of invention that the range is obvious over the range disclosed by Besso et al.
A second wrapper overwraps the first wrapper and attaches the filter.
It would have been obvious to one of ordinary skill in the art at the time of invention to use the elements disclosed by Besso et al. in the smoking article of Zuber to provide sufficient aerosol (high humectant level) and be mechanically stable while the paper is in contact with the aerosol generator [0007]. In addition, the paper of Besso et al. reduces the appearance of spots that are visible to consumers caused by absorption of water or humectant from the paper [0026]. Using the particular aerosol generator, mouth end filter, and wrapper of Besso et al. would be well within the ability of one of ordinary skill and would achieve in predictable results (i.e. reduced wetting of the wrapper).
Zuber and Besso et al. do not disclose a ventilation zone in the hollow tubular segment. However, Malgat et al. disclose a similar smoking article to both Zuber and Besso et al. and disclose that a second air flow arrangement is provided through a one or more perforations through the wrapper downstream of the aerosol-forming substrate ([0010], claim 5). It would have been obvious to one of ordinary skill in the art at the time of invention to form one or more perforations through the wrapper and hollow tubes of Zuber to provide a second air flow stream as taught by Malgat et al. for the pruposes disclosed by Malgat et al. (see Abstract).
Regarding claims 4 and 13, Besso et al. disclose using homogenized or reconstituted tobacco [0051].
Regarding claims 9 and 10, Besso et al. disclose power supply (240, see figure 2), control electronics (250), and an electrically resistive heating element (220) [0075].
Claim(s) 6, 7, 15, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zuber (US 20160295926 A1), Besso et al. (US 20170215475 A1), and Malgat et al. (US 20160331032 A1) as applied to claims 1 and 8 above and in further view of Chapman et al. (US 6,976,493 B2).
Regarding claims 6, 7, 15, and 16 Zuber and Besso et al. do not disclose paper with at least 95% cellulosic material. However, it is known to make low permeability paper, such as that disclosed by Besso et al. with high amounts of cellulose fiber. For instance, Chapman discloses that base paper wrapping for smoking articles can have porosities of 5 CORESTA units and have 55 to 100% fibrous material or even 65 to 95%. Chapman et al. further discloses that fibrous material is, “most preferably is a cellulosic material”. It would have been obvious to one of ordinary skill in the art at the time of invention to use the base paper of Chapman et al. in the basis weight and thickness disclosed by Besso et al. to wrap smoking articles to prevent damage from moisture and maintain mechanical strength as taught by Besso et al.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Felton/Primary Examiner, Art Unit 1747
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