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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/6/2026 has been entered.
Status of the Claims
Claims 2-4, 7-9, 11, 24, 25 and 28-34 are pending.
Claim 3, 9, 24, 25, 28-32 are withdrawn.
Claims 2-4, 7-9, 11, 24, 25 and 28-33 have been amended.
Claim 34 is new.
Response to Amendment
The Affidavit under 37 CFR 1.132 filed 3/6/2026 is insufficient to overcome the rejection of claims 2, 4, 7, 8, 11, 33 and 34 based upon Rabinowitz in view of Lechuga-Ballesteros and further in view of Andersson as set forth in the last Office action because: the experimental results fail to demonstrate the criticality of 5 wt% nicotine protonation, and show that the stated unexpected results occur only within the claimed range.
The experimental results test 0 wt% nicotine protonation, 5 wt% nicotine protonation and 99.95 wt% nicotine protonation. There is no testing done between 0 wt% nicotine protonation and 5 wt% nicotine protonation, showing unexpected results within the claimed range that are not present outside of the claimed range, hence supporting the criticality of 5 wt% nicotine protonation.
As stated in the Patent Board Decision dated 1/3/2025 on page 13, “Finally, in order for a showing of "unexpected results" to be probative evidence of non-obviousness, an applicant must establish that (1) there actually is a difference between the results obtained through the claimed invention and the prior art; and (2) that the difference would not have been expected by one skilled in the art at the time of invention. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
In this case, Rabinowitz discloses that a proper choice of ion pairing agent "may enhance the shelf life stability of the composition and/or electronic cigarette." Rabinowitz ¶ 42 (emphasis added). Thus, Rabinowitz appears to show that a protonated nicotine solution within the scope of claim 11 would have been expected to have an improved stability. See Pfizer, Inc. V. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (a proper evaluation of unexpected results includes a consideration of what the skilled artisan would have expected).”
Thus, the prior art supports nicotine protonation because it "may enhance the shelf life stability of the composition and/or electronic cigarette." Rabinowitz ¶ 42 (emphasis added). The Applicant has failed to show that only 5 wt% or more nicotine protonation results in an unexpected result which does not occur at any amount of nicotine protonation greater than 0 wt% nicotine protonation.
Response to Arguments
Applicant's arguments filed 3/6/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
Applicant submits that Rabinowitz discloses that the ion pairing agent may be chosen to minimize the loss of nicotine (cf. paragraph [0042]). However, there is simply no direction of which acids may achieve this effect and how. Indeed, the skilled person could only ever assume that each of the acids disclosed in paragraph [0048] are comparable and would yield the same result where loss of nicotine is concerned. Furthermore, the skilled person would not understand that such significant stability issues exist when a nicotine solution is contacted with polypropylene and/or polycarbonate container materials. It is these specific issues which the Applicant surprisingly found could be solved by using specific amounts of benzoic acid.
The disclosures in paragraph [0041] to [0042] of Rabinowitz indicate that the ion-pairing agent is selected on its ability to affect or adjust the pH of the formulation. However, there is no teaching that would enable the skilled person to adjust the pH one way or another with the expectation of minimizing loss of nicotine. Notwithstanding this, the skilled person knows that benzoic acid has a pKa of approximately 4.20, while the pKa values of levulinic and lactic acid are 4.6 and 3.86 respectively. Even if the skilled person were minded to select an acid capable of providing a more acidic pH (i.e., using an acid with a low pKa value, e.g., lactic acid) or one capable of providing a less acidic pH (i.e., using an acid with a higher pKa value, e.g., levulinic acid), it does not explain why benzoic acid performs better than levulinic acid and lactic acid, yet has a pKa value falling between the pKa values of levulinic acid and lactic acid. There are no other indications or pointers in Rabinowitz that would lead the skilled person to specifically protonate nicotine with benzoic acid in the expectation of reducing loss of nicotine more than any other acid mentioned in the disclosure.
On this basis alone, the effects shown above are both unexpected and surprising relative to the closest prior art in the form of Rabinowitz. Applicant submits that the same conclusion would also be reached if Lechuga-Ballesteros was selected as the closest prior art. In this regard, Lechuga-Ballesteros describes a generic list of acids, but provides no disclosure that would explain why the use of benzoic acid retains more nicotine than any other acid, e.g. lactic acid.
Examiner Response A:
The Examiner defers to page 12 of the Patent Board Decision dated 1/3/2025 which states, “In that regard, there is no dispute on this record that Rabinowitz discloses a protonated nicotine solution for an electronic cigarette that comprises nicotine, a solvent, and an ion pairing agent. Rabinowitz ¶ 6. Rabinowitz discloses that examples of the ion pairing agent include nonprotic carboxylic acids, such as benzoic acid, levulinic acid, and lactic acid. Rabinowitz ¶ 48. Rabinowitz also discloses that the molar ratio of ion pairing agent to nicotine (ion pairing agent : nicotine) may range from about 1:3 to about 3:1. See Rabinowitz ¶¶ 50, 51.”
Page 12 of the Patent Board Decision dated 1/3/2025 further states, “Lechuga-Ballesteros discloses that organic acid (e.g., benzoic acid) is present in a mole ratio with nicotine in a range of about 0.25:1 to about 4:1 (organic acid: nicotine), which encompasses the molar ratio ranges disclosed in Rabinowitz. Lechuga-Ballesteros ¶¶ 40, 42. Lechuga-Ballesteros also discloses that greater than 50% of the free base nicotine is converted to a nicotine salt in combination with the organic acid. Lechuga-Ballesteros ¶¶ 47; see also id. ¶¶ 67, 91 (disclosing that "at an approximately 1.2:1 ratio (acid : nicotine) the majority of the nicotine free base was converted to the nicotine salt").”
Applicant Argument B:
In light of the above, Applicant has provided probative evidence of non-obviousness, by explicitly showing that (1) there actually is a difference between the results obtained through the claimed invention and the prior art; and (2) that the difference would not have been expected by one skilled in the art at the time of invention. As mentioned above, the skilled person was not aware of the particular stability issues associated with the use of nicotine solutions with polypropylene and polycarbonate materials. Furthermore, the skilled person would not expect benzoic acid to perform in such a superior manner relative to any of the other acids disclosed in Rabinowitz or Lechuga-Ballesteros.
Examiner Response B:
The Examiner respectfully disagrees that there actually is a difference between the results obtained through the claimed invention and the prior art, and that the difference would not have been expected by one skilled in the art at the time of invention. Please see explanation of why the Affidavit under 37 CFR 1.132 filed 3/6/2026 is insufficient to overcome the rejection of claims 2, 4, 7, 8, 11, 33 and 34 based upon Rabinowitz in view of Lechuga-Ballesteros and further in view of Andersson as set forth in the last Office action (above).
Additionally, the Examiner defers to page 12 of the Patent Board Decision dated 1/3/2025 which states, “Notably, "evidence of unexpected results will not necessarily overcome a strong prima facie showing of obviousness," such as the prima facie case of obviousness in the instant appeal. Süd-Chemie, Inc. V. Multisorb Tech., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009).
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 2, 4, 7, 8, 11, 33 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20140345635 (RABINOWITZ hereinafter) in view of US2006/0018840 (LECHUGA-BALLESTEROS hereinafter) and further in view of WO 2004/076289 (ANDERSSON hereinafter).
Regarding claims 2, 4, 7, 8, 11, 33 and 34, Rabinowitz teaches an electronic vapor provision system, specifically an electronic cigarette (Fig. 1 A), comprising: a vaporization unit, or cartomizer, which comprises a heating element and a wick and a container (“tank”) ([0068]), wherein the container (“reservoir“) contains a nicotine solution ([0067]); and a battery (108).
Rabinowitz suggests the addition of acid, including levulinic and/or benzoic ([0048]), to the solution so that the solution includes nicotine in both free base (unprotonated) form and salt (protonated) form and to thereby optimize gas/particle portioning of nicotine to provide for deep lung deposition while generating a desirable amount of throat hit without irritation ([0043-0044]). It would have been obvious to one of ordinary skill in the art to optimize the total content of acid present in the solution and the balance of nicotine in unprotonated and protonated forms as a matter of routine experimentation to achieve the desired gas/particle portioning of nicotine to provide for deep lung deposition while generating a desirable amount of throat hit without irritation ([0043-0044]).
Rabinowitz does not expressly teach how much of the nicotine present in the solution is in protonated form forming the protonated nicotine solution.
Lechuga-Ballesteros teaches an aerosol formulation for inhalation comprising nicotine ([0004],[0007],[0009] and [0010]). Lechuga-Ballesteros teaches that the nicotine solution comprises free-base (unprotonated) nicotine and an organic acid ([0012]), wherein the organic acid is benzoic acid ([0042]), such that greater than 50 % of the free base nicotine is converted to a nicotine salt (protonated) form in combination with the organic acid ([0047)]. Lechuga-Ballesteros teaches that this aerosol formulation delivered to users through an inhalation device results in a nicotine delivery that is satisfactory to the user and delivers the nicotine in a manner that stimulated the nicotine delivery of a cigarette ([0010]). Thus, it would have been obvious for one of ordinary skill in the art at the time of filing to have applied the solution composition of Lechuga-Ballesteros to the electronic cigarette of Rabinowitz in order to achieve a nicotine delivery that is satisfactory to the user and delivers the nicotine in a manner that stimulated the nicotine delivery of a cigarette (Lechuga-Ballesteros, [0010]).
The combined teaching of Rabinowitz and Lechuga-Ballesteros is silent with respect to the material of the container.
Andersson teaches a container comprising nicotine for use in an inhaling device (abstract), wherein the container is comprised of polypropylene or polycarbonate (page 5, lines 29-33 through page 6, line 1). The instant specification states that the container materials that exhibit these properties are polycarbonate or polypropylene. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). It would have been obvious for one of ordinary skill in the art at the time of the invention to have made the nicotine container of the combined teaching of Rabinowitz and Lechuga-Ballesteros out of the material of the nicotine container of Andersson with a reasonable expectation of success and predictable results.
Conclusion
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755