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 .
Response to Amendment
Claims 1, 21, 26 and 29 are amended. Claims 8, 12-13, 23, 27 and 31 are cancelled. Claim 32 is newly added. Claims 1-7, 9-11, 14-20 and 32 are presently examined. Claim 32 is objected to.
Terminal Disclaimer
The terminal disclaimer filed on 9/18/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US. Patent Application No’s. 16/761,060, 17/290,328, 17/290,411 and 17/290,509 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1-7, 9-11, 14-16 and 19-20 are rejected under 35 U.S.C. 103 as being obvious over Cameron (US 2017/0325494) in view of Kuntawala (US 2016/0198759) and Demain (US 5,144,964) and Turbi (US 2019/0328040) and Woodson (US 2004/0129280).
Regarding claim 1, Cameron discloses a natural-based liquid composition for use in an electronic vaping device comprising water and nicotine [0010]. The water is present at about 85 weight percent [0056]. The composition may be augmented with a flavoring [0002], also indicating that the solution need not contain a flavoring as well. The composition may comprise additional elements such as acids [0078], indicating that such additives are optional. Cameron does not explicitly disclose (a) the liquid containing a cyclodextrin, (b) the cyclodextrin being a substituted cyclodextrin, (c) the liquid comprising an acid at a specific concentration and (d) an aerosolization temperature.
Regarding (a), Kuntawala teaches a vaping fluid containing active ingredients (abstract) such as caffeine combined with a cyclodextrin to enhance absorption and avoid irritation [0014].
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 liquid of Cameron with the cyclodextrin encapsulating caffeine of Kuntawala. One would have been motivated to do so since Kuntawala teaches that caffeine is provided in cyclodextrin to provide a stimulant.
Regarding (b), Demain teaches a smoking composition containing a novel flavorant release additive in the form of a cyclodextrin derivative that releases a volatile flavorant component into the mainstream smoke to improve the smoke taste (abstract). The cyclodextrin is a substituted cyclodextrin so that it solubilizes better in water (column 2, lines 61-68, column 3, lines 1-4). The substituted cyclodextrin stabilizes the flavor at room temperature (column 4, lines 48-56). Demain additionally teaches that the flavorant is released under smoking conditions (abstract), which one of ordinary skill in the art would recognize are elevated temperatures.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the substituted cyclodextrin of Demain as the cyclodextrin of modified Cameron. One would have been motivated to do so since Cameron discloses a water based formulation and Demain teaches that substituted cyclodextrins provide better stability in water than unsubstituted cyclodextrins.
Regarding (c), Turbi teaches an electronic cigarette including a liquid formulation (abstract) having an organic acid that is added to the formulation at a 3:1 molar ratio relative to nicotine [0091]. The organic acid generates a salt [0090] that mitigates the off-target effects of nicotine while increasing its safe digestibility [0089] and reducing a feeling a harshness [0007].
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 an acid in the formulation of Cameron at the ratio of Turbi. One would have been motivated to do so since Turbi teaches that an acid provided at that ratio to nicotine mitigates the off-target effects of nicotine while increasing its safe digestibility and reducing a feeling a harshness.
Regarding (d), Woodson teaches an electrically heated cigarette (abstract) having an inclusion complex containing cyclodextrin that releases a flavoring held within it when it reaches a temperature of at least 60 °C [0075], which is a minimum temperature during smoking (abstract).
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 article of Cameron with the temperature of Woodson. One would have been motivated to do so since Woodson teaches a suitable temperature for causing a cyclodextrin inclusion complex to release a stabilized component during smoking.
Regarding claims 2-4, Cameron discloses that the water is present at about 98 weight percent [0056].
Regarding claim 5, modified Cameron teaches all the claim limitations as set forth above. Cameron additionally discloses that water may be present in the liquid at about 70 weight percent to about 99 weight percent [0015]. Modified Cameron does not explicitly teach the water being present at at least 99 weight percent.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the water weight in the liquid of Cameron to be at least 99 percent. One would have been motivated to do so since Cameron discloses that the water weight may be up to about 99 percent. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding claims 6 and 7, Cameron discloses that the nicotine is present in the liquid at an amount from about 0.01 weight percent to about 0.3 weight percent [0058].
Regarding claims 9-11, Cameron discloses that the liquid contains citric acid [0078].
Regarding claims 14-16, Cameron discloses that the liquid contains menthol [0122].
Regarding claims 19 and 20, Kuntawala teaches that the active ingredient is caffeine [0014] that functions as a stimulant [0013]. It is noted that caffeine falls outside the types of molecules described in applicant’s specification as flavorants, which produce desired flavors in the formulation (page 16, lines 19-30, page 17, lines 1-7). One of ordinary skill in the art would recognize that the composition contains no flavors since Cameron does not require flavor.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being obvious over Cameron (US 2017/0325494) in view of Kuntawala (US 2016/0198759) and Demain (US 5,144,964) and Turbi (US 2019/0328040) and Woodson (US 2004/0129280) as applied to claim 14 above, and further in view of Dull (US 2019/0116863).
Regarding 17 and 18, modified Cameron teaches all the claim limitations as set forth above. Modified Cameron does not explicitly teach a loading of the flavoring agent.
Dull teaches a method for preparing an aerosol precursor composition (abstract) including a flavoring agent [0020] present at about 0.1% to about 0.5% by weight [0026]. Dull additionally teaches that providing a flavor alters the flavor, aroma, and/or organoleptic properties of the aerosol [0020].
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 the flavoring agent of modified Cameron at the weight of Dull. One would have been motivated to do so Dull teaches a suitable flavor weight for an aerosol precursor composition that alters the flavor, aroma, and/or organoleptic properties of the aerosol.
Allowable Subject Matter
Claim 32 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Kuntawala (US 2016/0198759) teaches a vaping fluid containing active ingredients (abstract) such as caffeine combined with a cyclodextrin to enhance absorption and avoid irritation [0014]. However, while Kuntawala teaches various molar concentrations of cyclodextrin [0028], Kuntawala does not teach or suggest a specific weight of the cyclodextrin.
Chen (CN 105876852, machine translation relied upon) teaches a heat sensitive fragrance filter stick [0011] having β-cyclodextrin at a specific weigh ratio relative to other components [0020]. While these ratios would allow the β-cyclodextrin to be present at as low at 9.2 wt%, the formulation is a colloid [0015], not a liquid solution as claimed, and it is unclear what weight ratio would be used in a liquid formulation.
Zhang (CN 108669639, machine translation relied upon) teaches a microcapsule for tobacco technology [0002] having 40-60 wt% cyclodextrin [0009]. However, Zhang does not teach or suggest the weight of such microcapsules within a broader formulation.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered. Applicant argues (a) that Demain cannot teach incorporating cyclodextrin into a liquid formulation, (b) that the claimed water based formulation provides advantages that are not recognized by the cited references, (c) that the rejected dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), Kuntawala rather than Demain is relied upon to teach this feature. Demain is relied upon solely to teach using a substituted cyclodextrin in particular to hold a molecule.
Regarding (b), it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144 IV.
Regarding (c), all rejected claims, including the rejected independent claim, are rejected as set forth above.
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 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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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