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 1-3, 5-10, 13-20, 22-29, 37, and 43 are pending and are subject to this Office Action. Claims 20, 22-29, and 37 are withdrawn. Claims 4, 11-12, 21, 30-36, and 38-42 are cancelled. Claim 1 is amended.
Response to Amendments
The amendments to the claims filed on October 27, 2025 are acknowledged.
Response to Arguments
Applicant's arguments, see pgs 7-10, filed October 27, 2025, with respect to the rejection(s) of claims 1-3, 5-10, 12-19, and 43 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claim 1 to include the limitation: “wherein the agglomerated structure has a generally rod-shaped external form with a cross-sectional geometry including spokes, or which is a polygonal or a star shape.” While the prior art of record discloses that the agglomerated structure can be rod shaped or star shaped (Rojo-Calderon, [0027]-[0030], [0160]), Rojo-Calderon does not disclose an agglomerated structure having a generally rod-shaped external form which is star shaped. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly found prior art references in combination with previously applied prior art. The following is a modified rejection based on amendments made to the claims.
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.
Claims 1-3, 5-10, 13-16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US 2020/0008471 A1) in view of Rabes (US 2019/0380377 A1), and Duc (US 2020/0375243 A1), as evidenced by Batista (US 2017/0181466 A1) and Bell (US 2016/0205992 A1).
Regarding Claim 1, Reevell, directed to aerosol generating articles ([0001]) and aerosol generating substrates ([0004]-[0005]), teaches a tobacco constituent releasing component ([0004]-[0005], [0129]-[0130], Figs. 1-3; Tubular aerosol-generating article 2 comprises a tubular aerosol-forming substrate 4, which releases volatile tobacco flavor compounds upon heating) comprising:
an agglomerated structure formed from a precursor composition comprising tobacco particles ([0059]-[0064], [0129]-[0130], Figs. 1-3; The tubular aerosol-generating article 2 comprises a cylindrical open-ended hollow tube of aerosol-forming substrate 4. Tubular (solid) aerosol-forming substrate 4 comprises homogenized tobacco which can be formed by agglomerating particulate tobacco) and
one or more aerosol forming agents ([0066]; Aerosol formers may be included in the aerosol forming substrate);
wherein the tobacco particles comprise one or more tobacco constituents ([0064]; It is reasonably understood that particulate tobacco comprises one or more tobacco constituents); and
wherein the release of the one or more tobacco constituents upon heating the component without combustion being controlled by the selection of one or more of: (i) a ratio of the surface area to volume of the component, and (ii) an amount of the optional one or more aerosol forming agents included ([0004]-[0005], [0059]-[0066]; The limitation has been interpreted as a functional limitation relating to an intended use of the tobacco constituent releasing component of Claim 1. Because Reevell teaches all of the positively recited components of the claimed tobacco constituent releasing component, the release of the one or more tobacco constituents upon heating the component without combustion must be necessarily capable of being controlled by the selection of one or more of: (i) a ratio of the surface area to volume of the component, and (ii) an amount of the optional one or more aerosol forming agents included. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP § 2114),
wherein agglomerated structure has one inner channel extending through it ([0004], [0130], Fig. 1; The tubular aerosol-generating article 2 comprises aerosol-forming substrate 4. An inner passage 5 (channel) extends centrally through aerosol-forming substrate 4),
but does not teach the tobacco constituent releasing component i) wherein the tobacco particles consist of ground, shredded, cut or crushed tobacco and are impregnated with one or more of the aerosol forming agents, ii) wherein the agglomerated structure has a generally rod-shaped external form with a cross-sectional geometry including spokes, or which is a polygonal or a star shape.
With respect to i), Rabes, directed to aerosol generating substrates ([0004]), teaches tobacco particles ([0004], [0020], [0060]-[0065], Example 1 describes process of making particulate tobacco, wherein a sheet of tobacco fibers is formed, the sheet is impregnated with glycerol, and the sheet is dried and shredded to form a plurality of tobacco particles),
consisting of ground, shredded, cut or crushed tobacco and one or more aerosol forming agents ([0004], [0020], [0060]-[0065], Example 1 describes process of making particulate tobacco, wherein a sheet of tobacco fibers is formed, the sheet is impregnated with glycerol, and the sheet is dried and shredded to form a plurality of particles consisting of shredded tobacco and glycerol. Glycerol is an aerosol forming agent; see instant specification, pg 2, ln 16-17),
wherein the tobacco particles are impregnated with one or more aerosol forming agents ([0004], [0020], [0060]-[0065], Example 1 describes process of making particulate tobacco, wherein a sheet of tobacco fibers is formed, the sheet is impregnated with glycerol, and the sheet is dried and shredded to form a plurality of tobacco particles).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the tobacco particles impregnated with one or more aerosol forming agents taught by Rabes to form the agglomerated structure taught by Reevell because Reevell and Rabes are directed to aerosol generating substrates, Reevell states that the aerosol forming agent may be glycerol (Reevell, [0066]-[0067], Glycerine (glycerol)) and that the aerosol forming agents is included in an amount of from about 5% to about 30% by weight of the component (Reevell, [0066]), Rabes teaches tobacco particles impregnated with glycerol at 18.8% by weight (Rabes, [0060]-[0065], Example 1), Rabes demonstrates that the tobacco particles are very homogenous, have good organoleptic quality, and generates an aerosol that minimally irritates the throat (Rabes, [0004]), and this involves substituting one set of tobacco particles for another to yield predictable results.
Reevell in view of Rabes does not teach the tobacco constituent releasing component ii) wherein the agglomerated structure has a generally rod-shaped external form with a cross-sectional geometry including spokes, or which is a polygonal or a star shape.
With respect to ii), Duc, directed to aerosol generating articles ([0001]), teaches a tobacco constituent releasing component ([0086], Fig. 1; Aerosol-generating article 10 comprises a rod 12 of aerosol-generating substrate. [0015], [0029], The aerosol-generating substrate is a tobacco material, and at least one constituent of the aerosol-generating substrate is volatilized (released) upon heating) comprising:
an agglomerated structure formed from a precursor composition comprising tobacco particles ([0015], [0029], [0086], Fig. 1; The aerosol-forming substrate may comprise reconstituted tobacco. Reconstituted tobacco is a term that encompasses any tobacco material formed by the agglomeration of particles of tobacco material; see Batista, [0006]) and
one or more aerosol forming agents ([0034]);
wherein the tobacco particles comprise one or more tobacco constituents ([0029]; It is reasonably understood that tobacco particles comprise one or more tobacco constituents); and
wherein the agglomerated structure has a generally rod-shaped external form with a cross-sectional geometry including spokes, or which is a polygonal or a star shape ([0041], Aerosol generating articles in accordance with the present invention comprise an aerosol generating substrate, which may be provided as a rod comprising strands of non-tobacco material circumscribed by a wrapper. The aerosol generating substrate is an elongate rod-like element which may have a circular, oval, elliptical, star shaped, X-shaped, Y-shaped, triangular (polygonal), or rectangular (polygonal) cross-section).
It would have been obvious to one of ordinary skill in the art to configure the tobacco constituent releasing component taught by Reevell in view of Rabes to have a generally rod-shaped external form with a cross-sectional geometry including spokes, or which is a polygonal or a star shape as taught by Duc because Reevell, Rabes, and Duc are directed to aerosol generating articles, Reevell states that the tobacco constituent releasing component is tubular (Reevell, [0129], Figs. 1-3; The aerosol generating article is tubular), Duc demonstrates that polygonal-shaped cross section is a suitable alternative for a tubular tobacco constituent releasing component (Duc, [0041]), and changing the cross section of the surrounding wall from circular to ovular constitutes a change in form of shape to another known shape in the art. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding Claim 2, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein the one or more aerosol forming agents is included in an amount of from about 3% to about 30% by weight of the component ([0066], The one or more aerosol formers are included in an amount from 5% to 30% by weight of the aerosol-forming substrate).
Regarding Claim 3, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein the one or more aerosol forming agents is included in an amount of at least 10 % by weight of the component ([0066], The tubular aerosol-forming substrate may have an aerosol former content of about 20 percent on a dry weight basis),
wherein the tobacco constituent releasing component has one or more undulating or irregular surfaces and/or channels within the component ([0004], [0130], Fig. 1; The tubular aerosol-generating article 2 comprises aerosol-forming substrate 4. An inner passage 5 (channel) extends centrally through aerosol-forming substrate 4),
wherein the tobacco within the component does not have a basic pH ([0059]-[0066], Tobacco generally has a pH within the range of 4.5-6.5; see Bell, [0028]).
Regarding Claim 5, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Duc further teaches the component wherein the component has a cross-sectional shape of a spoked wheel or a star ([0041], The aerosol generating substrate may have a circular, oval, elliptical, star shaped, X-shaped, Y-shaped, triangular (polygonal), or rectangular (polygonal) cross-section).
Claim 6 is considered a product-by-process claim. The determination of patentability is based upon the product structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even if the prior product was made by a different process. In this instance, Reevell in view of Rabes and Duc discloses a structurally and compositionally equivalent product.
Regarding Claim 7, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein the one or more aerosol forming agents is selected from the group consisting of glycerol, propylene glycol and glyceryl triacetate ([0066]-[0067], The aerosol former may be glycerine (glycerol), propylene glycol and/or glycerol (glyceryl) triacetate).
Regarding Claim 8, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Rabes further teaches a tobacco constituent releasing component wherein the component is impregnated with the one or more aerosol forming agents, and/or the tobacco particles are impregnated with the one or more aerosol forming agents ([0004], [0020], [0060]-[0064], Example 1 describes process of making particulate tobacco, wherein a sheet of tobacco fibers is formed, the sheet is impregnated with glycerol, and the sheet is dried and shredded to form a plurality of tobacco particles. Glycerol is an aerosol forming agent; see instant specification, pg 2, ln 16-17).
Regarding Claim 9, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component comprising at least 50% by weight tobacco particles ([0059]-[0066], The one or more aerosol formers are included in an amount from 5% to 30% by weight of the aerosol-forming substrate. If the aerosol forming substrate comprises only the tobacco-containing material comprising homogenized tobacco formed from particulate tobacco and the one or more aerosol formers, the tobacco particles must comprise 70% to 95% by weight of the aerosol-forming substrate). The range for the tobacco particle amount suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 10, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component comprising at least 80% by weight a combination of tobacco particles and one or more aerosol forming agents ([0059]-[0066], If the aerosol forming substrate comprises only the tobacco-containing material comprising homogenized tobacco formed from particulate tobacco and the one or more aerosol formers, the aerosol forming substrate must comprise 100% tobacco particles and the one or more aerosol formers). The range for the amount of a combination of tobacco particles and one or more aerosol forming agents suggested by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 13, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein the component has a diameter of from about 4 mm to about 10 mm ([0051], The tubular aerosol-generating article may have a width (diameter) of from about 5 mm and about 20 mm). The range for the diameter disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 14, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein the component has a length of from about 5 mm to about 80 mm ([0052] The tubular aerosol-generating article may have a length of between about 10 mm and about 100 mm). The range for the length disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious.
Regarding Claim 15, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein the component does not have a basic pH and/or the precursor composition does not have a basic pH ([0059]-[0066], The precursor composition comprises tobacco particles. Tobacco generally has a pH within the range of 4.5-6.5; see Bell, [0028]).
Regarding Claim 16, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Rabes further teaches a tobacco constituent releasing component wherein the precursor composition does not include a basic pH adjusting agent ([0060]-[0064], Example 1, Rabes does not mention including a basic pH adjusting agent in the shredded tobacco).
Regarding Claim 18, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein the component does not comprise a binder to assist agglomeration of the tobacco particles ([0059]-[0066], Reevell does not mention including a binder to assist agglomeration of the tobacco particles).
Regarding Claim 19, Reevell in view of Rabes and Duc teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component further comprising one or more flavor-modifying additives ([0075]-[0076], The tubular aerosol-generating article may comprise a mouthpiece having flavourants).
Claims 17 and 43 are rejected under 35 U.S.C. 35 U.S.C. 103 as being unpatentable over Reevell (US 2020/0008471 A1) in view of Duc (US 2020/0375243 A1) as applied to claim 1, and further in view of Klipfel (US 2019/0380376 A1).
Regarding Claim 17, Reevell in view of Rabes and Duc does not teach a tobacco constituent releasing component further comprising one or more binders, selected from the group consisting of starches, polysaccharides, pectins, celluloses, cellulose derivatives, carboxymethylcellulose, and alginates.
Klipfel, directed to aerosol generating articles ([0001]), teaches a homogenized tobacco material ([0001]) comprising:
tobacco particles ([0009], [0011]); and
one or more binders ([0009], [0011]),
selected from the group consisting of starches, polysaccharides, pectins, celluloses, cellulose derivatives, carboxymethylcellulose, and alginates ([0034]-[0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include one or more binders selected from the group disclosed by Klipfel in the tobacco constituent releasing component taught by Reevell because Reevell and Klipfel are directed to aerosol generating articles, Reevell states that the tobacco constituent releasing component comprises homogenized tobacco formed by agglomerating particulate tobacco (Reevell, [0059]-[0064]; Tubular aerosol-forming substrate comprises homogenized tobacco which can be formed by agglomerating particulate tobacco), and Klipfel demonstrates that binders help agglomerate particles of tobacco and to ensure that the tobacco particles remain substantially dispersed throughout the homogenized tobacco web (Klipfel, [0011], [0034]).
Regarding Claim 43, Reevell in view of Rabes and Duc does not teach a tobacco constituent releasing component wherein the tobacco particles have an average diameter no greater than 0.5 mm.
Klipfel, directed to aerosol generating articles ([0001]), teaches a homogenized tobacco material ([0001])
which can be formed by agglomerating particulate tobacco ([0009], [0011]),
wherein the tobacco particles have an average diameter no greater than 0.5 mm ([0007], [0029], The homogenized tobacco material is formed from tobacco powder which has been ground to mean size (average diameter) of between about 0.03 mm and about 0.12 mm).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the tobacco particles having an average diameter no greater than 0.5 mm because Reevell and Klipfel are directed to aerosol generating articles, Reevell states that the tobacco constituent releasing component comprises homogenized tobacco formed by agglomerating particulate tobacco (Reevell, [0059]-[0064]; Tubular aerosol-forming substrate comprises homogenized tobacco which can be formed by agglomerating particulate tobacco), and Klipfel demonstrates that tobacco particles bigger than about 0.15 millimetres may be the cause of defects and inhomogeneous areas in the homogenized tobacco web that is formed from the tobacco particles (Klipfel, [0007]).
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 JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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/J.M.M./
Examiner, Art Unit 1755/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755