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
Applicant’s amendment to include the transitional phrase “consisting essentially of” has been entered but fails to place the application in condition for allowance as noted below.
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.
Claim(s) 16, 17, 25-27, 30, 31 and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Bruton (US 12,232,522).
Bruton teaches a system for producing a nicotine aerosol for use in e-cigarettes (column 1, lines 16-20).
Regarding claims 16, 17 and 34, Bruton does not teach the presence of caffeine and teaches a nicotine content of greater than 1%, thus over lapping in scope with the claimed Less than or equal to about 3% (column 7, lines 60-64 and also claim 7, no greater than 2%, see also column 10). Applicants use of the transitional phrase “consisting essentially of” does not distinguish from Bruton, since what it attempts to exclude, the non-salt form of nicotine, does not prevent Bruton form being used as an aerosol generating system, the same as applicant’s invention (see MPEP 2111.03 III)
III. CONSISTING ESSENTIALLY OF
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976).
Bruton teaches that water can be present in the formulation at a level of up to 50% (column 6, lines 54-61), and that the formulation may comprise polyhydric alcohols carriers such as propylene glycol and glycerol (column 5, lines 55-62). The amount of carrier can be as low as 10% (column 6, line 1), thus rendering obvious that the ratio of water to the polyhydric alcohols may be greater than 2 or 3. Bruton teaches that the combined amount of water and carrier may be as high as 90% (column 7,lines 35-37), thus rendering the claimed greater than or equal to about 85% obvious to one of ordinary skill in the art. Since the water content can be as high as 50%, and the polyhydric alcohol content can be as low as 10%, such would give a ratio of 5, which is within the less than 8 taught in claim 17.
Bruton differs in teaching the amount of organic acid in an electrolyte used instead of the total formulation. Bruton however teaches that the organic acid may be present in any amount to provide carbon dioxide upon electrolysis (column 13, lines37-37), see also claim 9 which indicates that the nicotine formulation contains the carbon dioxide source.. It would be obvious to one of ordinary skill in the art to vary the amount of the organic acid in the formulation, including the levels of about 2% or greater, in order to achieve providing sufficient carbon dioxide from electrolysis.
With respect to claims 25-27, 30 and 31, Bruton teaches cartridges and heaters used in the invention for e-cigarettes (column19, lines 11-34).
With respect to claim 33, Bruton teaches that the carrier can be a mixture of glycerol and propylene glycol (column 5, lines 61-62) and may be present in a level of 20% to 98% (column 6, line 2), thus over lapping and rendering obvious the greater than or equal to 20% claimed.
Claim(s) 22, 23, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Bruton (US 12,232,522) as applied to claims 16, 25 and 26 above in view of Cameron (US 2017/0325494).
With respect to claim 22, Bruton teaches the use of water insoluble flavorants such as Rose oil and Orange oil (column 6, lines 30-51). Bruton fails to teach that the flavorant is present in an amount greater or equal to 2%. In the same field of endeavor, Cameron discloses a liquid nicotine composition comprising a flavoring agent which can comprise Rose oil or Orange Oil (0078) Cameron further teaches that the liquid nicotine composition comprises about 0.01 weight percent to about 10 weight percent of the flavoring agent ([0086]). Therefore it would have been obvious to one of ordinary skill in the art to utilize the Rose oil or Orange oil of Bruton at a level of up to 10% (greater than 2%), since such levels would be expected to have the result of giving an effective flavor to the nicotine composition of Bruton.
Regarding claim 23, Cameron discloses the liquid nicotine composition comprises alpha-methylbenzyl alcohol (C8H10O) as a flavorant ([0078]). As is known in the art, alpha-methylbenzyl alcohol (i.e., partially water-soluble solvent) has a water solubility value of about 19.54 mg/ml at 25oC at room temperature (i.e., 20oC-25oC).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the liquid nicotine formulation (i.e., pre-vaporization formulation) of Bruton to incorporate the teachings of Cameron by including alpha-methylbenzyl alcohol into the inhalable nicotine composition, so that the formulation of Bruton would have a desirable fragrance, as recognized by Cameron.
Regarding claims 28-29, Cameron discloses an electronic vaporizing device comprising a piezoelectric dispersing element (i.e., non-thermal atomizer) which causes dispersion (i.e., vaporize) of the vaporizable material (i.e., liquid nicotine composition) by producing ultrasonic vibrations ([0098]). Cameron is considered to be analogous art because it is reasonably pertinent to the aerosol-generating devices.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electronic vaping device of Bruton to incorporate the teachings of Cameron by including a piezoelectric dispersing element to vaporize the liquid nicotine composition without the need for a heating element, as recognized by Cameron.
Response to Arguments
Applicant has argued that the use of the term “consisting essentially of” distinguishes over Bruton. ). Applicants use of the transitional phrase “consisting essentially of” does not distinguish from Bruton, since what it attempts to exclude, the non-salt form of nicotine, does not prevent Bruton form being used as an aerosol generating system, the same as applicant’s invention (see MPEP 2111.03 III). Therefore the basic and novel characteristics of the claim is not distinguished
III. CONSISTING ESSENTIALLY OF
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976)
As noted in the interview, the use of the transitional term “consisting of” would seem to overcome the rejection of record, but such is not true for the use of “consisting essentially of”.
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 PHILIP C TUCKER whose telephone number is (571)272-1095. The examiner can normally be reached M-F 8-4:30.
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/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
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