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 the Claims
Claims 1-9, 12-15 and 20-26 are pending.
Claims 1-9, 12-15 and 23 have been amended.
Claims 16-19 have been cancelled.
Claims 20, 21 and 24 remain withdrawn.
Claim 26 is new.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive.
The amendment to claims 1 and 5 does not overcome the prior art and place the application into condition for allowance. Claims 1 and 5 have been amended to include limitation previously addressed. Specifically, claim(s) 1-3, 5-9, 12, 13, 22, 23, 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016184977 (Aoun hereinafter) in view of US 6779531 (Biggs hereinafter) in view of EP0419974 (Jakob hereinafter) and further in view of US 5396911 (Casey hereinafter), as evidenced by Specialty Minerals Performance Minerals Locations (Specialty Minerals Plants) and ViCALity® SG Food Grade Precipitated Calcium Carbonate (Technical Data Sheet).
A modified rejection is provided below based on amendments made to the claims.
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.
Claims 22 and 23 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 22 and 23 do not limit the subject matter of amended claim 1 because they recite the same limitations added to claim 1 via amendment. 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 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.
Claim(s) 1-3, 5-9, 12, 13, 22, 23, 25 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2016184977 (Aoun hereinafter) in view of US 6779531 (Biggs hereinafter) in view of EP0419974 (Jakob hereinafter) and further in view of US 5396911 (Casey hereinafter), as evidenced by Specialty Minerals Performance Minerals Locations (Specialty Minerals Plants) and ViCALity® SG Food Grade Precipitated Calcium Carbonate (Technical Data Sheet).
Regarding claims 1-3, 5-8, 12, 22 and 23, Aoun teaches a contained aerosolizable product comprising: (a) a container, or cartridge, wherein the container is configured for engagement with an electronic aerosol provision system, or device (page 18, lines 28-29); and (b) an aerosolizable product (“aerosol generating material”) comprising: (i) an aerosol forming material (“aerosol generating agent”) in the form of a liquid, wherein the aerosol forming material is present in an amount of 10-35 wt% aerosol generating material (abstract and page 2, lines 24-25); and (ii) a substrate material (“filler”) (page 2, lines 3-6), wherein the substrate material consists of calcium carbonate (page 2, lines 24-25).
Aoun does not expressly teach that the calcium carbonate is present in an amount of at least 85 wt.% based on the aerosolizable product.
Biggs teaches an aerosolizable product comprising an aerosol forming material and an inorganic filler, wherein any other components are optional (abstract). Biggs teaches that the aerosol forming material is present in a range of about 2% to about 30% by weight (col. 1, lines 28-30). Biggs teaches that the inorganic filler is calcium carbonate (col. 1, lines 61-62), which is present in at least about 45% by weight (col. 2, lines 1-2). Thus, the most calcium carbonate that the aerosolizable product comprises is 98% by weight. Biggs further teaches that the aerosolizable product is in particulate form, specifically the product is extruded and then suitably cut to a particulate form (col. 1, lines 40-44), which would result in a “pellet” form. It would have been obvious for one of ordinary skill in the art at the time of filing to have applied the teachings of Biggs to Aoun with a reasonable expectation of success and predictable results.
Modified Aoun does not expressly teach the total surface area of the calcium carbonate present in the aerosolizable product or that the substrate material includes at least 50 weight % calcium carbonate based on the substrate material.
Jakob teaches an aerosolizable product comprising: (a) an aerosol forming material (“aerosol generating material”) in the form of a liquid, specifically a combination of glycerol and propylene glycol (col. 8, lines 51- col. 9, line 1); and (b) a substrate material (“inorganic filler materials (e.g. precipitated calcium carbonate)),” col. 7, lines 15-17), wherein the substrate material consists of precipitated calcium carbonate available as Code No. 2A from Pfizer, Inc. (col. 24, lines 37-39). Minerals Technologies Inc. took over a number of precipitated calcium carbonate plants operated by Pfizer, Inc. and currently produces precipitated calcium carbonate for many purposes including food and pharmaceuticals (Specialty Minerals Plants). The food grade precipitated calcium carbonate produced by Specialty Minerals is 98.75% Calcium Carbonate (Technical Data Sheet). Thus, the substrate material of Jakob is 98.75% Calcium Carbonate based on the substrate material. Jakob teaches the total surface area of the calcium carbonate present in the aerosolizable product is less than 30 m2 per gram (according to the BET method) present in the aerosolizable product (col. 12, lines 5-8 and 12-15 and col. 11, lines 1-3). It would have been obvious for one of ordinary skill in the art before the effective filing date to have applied the teachings of Jakob to the invention disclosed by modified Aoun because it has been held that applying a known technique (the optimization of the surface area of calcium carbonate as taught by Jakob) to a known product (calcium carbonate as taught by modified Aoun) ready for improvement to yield predictable results (optimal loading of calcium carbonate with aerosol generating material in an aerosolizable product) would have been obvious to one of ordinary skill in the art at the time of the invention. See MPEP 2143.
The original disclosure teaches that the calcium carbonate has a specific surface area (according to the BET method) of at least 5 m2 per gram (page 21-22) and also teaches that the aerosol forming materials may be present in any suitable amount in the aerosolizable product, including at least 1 wt% based on the aerosolizable product (page 15-16). Thus, Modified Aoun teaches calcium carbonate which has the same specific surface area (according to the BET method, Jakob) and also teaches aerosol forming materials in the claimed amount, specifically in an amount of 10-35 wt% aerosol generating material (Aoun, abstract and page 2, lines 24-25). Therefore given that Modified Aoun teaches calcium carbonate which has the same specific surface area (according to the BET method, Jakob) as the instant disclosure and also teaches aerosol forming materials in the claimed amount, specifically in an amount of 10-35 wt% aerosol generating material (Aoun, abstract and page 2, lines 24-25), the total surface area of the calcium carbonate present in the product per gram of liquid aerosol forming material is expected inherently to be the same. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Modified Aoun does not expressly teach that the aerosolizable product comprises channels and/or ridges.
Casey teaches substrate material for smoking articles, particularly cigarettes (abstract) wherein inorganic filler materials can be incorporated as fillers in the substrate, including calcium carbonate (col. 12, lines 37-42). Casey teaches that the substrate composition may be formed into a useful substrate for cigarettes and other smoking articles by various processing methods (col. 12, lines 55-58) including extruding a relatively thick slurry into discretely shaped particles, which may also include one or more passageways or channels therein or thereon, for modification of the surface area (col. 13, lines 2-5). It would have been obvious for one of ordinary skill in the art at the time of filing to have made the substrate of Modified Aoun have channels therein or thereon for modification of the surface area (col. 13, lines 2-5).
Regarding claim 9, modified Aoun teaches an aerosolizable product comprising water (Jakob, col. 21, line 12).
Regarding claim 13, modified Aoun teaches an aerosolizable product comprising tobacco (Jakob, col. 8, lines 1-15), which comprises nicotine.
Regarding claim 25, regarding the limitation, “wherein the channels and/or ridges provide airflow paths around the material for drawing vapor generated from the liquid aerosol forming material,” this is a functional limitation. The courts have held that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP 2114 II. In this case, all of the structural limitations are taught (see rejection of claim 1).
Regarding claim 26, modified Aoun teaches that the container is configured to become fluidly in communication with the electronic vapor provision system (Aoun, claims 10 and 11).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoun in view of Biggs in view of Jakob and further in view of Casey as applied to claim 1, and further in view of US 20120312314 (Plakidis hereinafter).
Regarding claim 4, Modified Aoun does not expressly teach that the calcium carbonate has a specific surface area (according to the BET method) of at least 70 m2/g.
Plakidis teaches an aerosol generating article for a smoking article comprising particulate sorbent material coated and/or impregnated with diluent, wherein the particulate material has a high BET specific surface area or is calcium carbonate ([0001]). Plakidis teaches that, preferably, the particulate porous material has a BET specific surface area of at least 1300 m2/g, preferably at least 1400, 1500, 1600, 1700 or 1800 m2/g. In general, the greater the BET specific surface area, the greater the amount of diluent that can be carried by the particles. However, the brittleness can increase if the surface area is too high. Preferably, the BET specific surface area is 3000 m2/g or less, preferably 2500 m2/g or less, preferably 2000 m2/g or less ([0012]). Since Plakidis teaches that calcium carbonate is an equivalent alternative for particulate material with a high BET specific surface area, it is reasonable that the BET specific surface area of calcium carbonate is roughly equivalent to the particulate material with a high BET specific surface area, which is well above 70 m2/g.
It would have been obvious for one of ordinary skill in the art at the time to have included calcium carbonate with a BET specific surface area above 70 m2/g, as taught by Plakidis, in modified Aoun because, in general, the greater the BET specific surface area, the greater the amount of diluent, specifically aerosol generating material, that can be carried by the particles which is beneficial for an aerosol generating article (Plakidis, [0012] and [0020]-[0021]).
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoun in view of Biggs in view of Jakob and further in view of Casey as applied to claim 13, and further in view of US 4807648 (Breckwoldt hereinafter).
Regarding claim 14 and 15, Modified Aoun teaches an aerosolizable product comprising tobacco (Jakob, col. 8, lines 1-15), which comprises nicotine, but does not expressly teach the amount of nicotine in the aerosolizable product.
Breckwoldt teaches an aerosol generating article for a smoking article aerosol forming composition that comprises 0.1 to 10 percent by weight nicotine (col. 2, lines 64- col. 3, line 2), which overlaps with the claimed ranges.
It would have been obvious for one of ordinary skill in the art before the effective filing date to have applied a known technique (the weight percent of nicotine taught by Breckwoldt) to a known product (the aerosolizable product of modified Aoun which contains nicotine) that was ready for improvement, and the results would have been predictable to one of ordinary skill in the art. See MPEP 2143.
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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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
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