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
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 18, 2026 has been entered.
Status of the Claims
Claims 1-3, 5-10, 13-20, 22-29, 37, and 43-44 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 Claims 20, 22-29, and 37 are withdrawn.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 44 is new.
Response to Amendments
The amendments to the claims filed on May 18, 2026 are acknowledged.
Response to Arguments
Applicant's arguments, see pgs 7-11, filed May 18, 2026, with respect to the rejection(s) of claims 1-3, 5-10, 13-19, and 43 under 35 U.S.C. 103 are moot because a new grounds of rejection is provided on the present Action, which relies upon a new combination of references.
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, and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US 2020/0008471 A1) in view of Gill (US 2017/0156403 A1) and Karstens (WO 2019/141373 A1, English Translation), 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),
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), Gill, directed to aerosol generating substrates ([0001]-[0002]), teaches tobacco particles ([0037], Figs. 1-4; Flavour-release medium 40; and [0016], The flavour-release medium may be any material which can be heated to release a vapour for inhalation by a user. The flavour-release medium may be tobacco or a tobacco material and may be impregnated with a vapour-forming medium such as propylene glycol. The flavour-release medium could take any suitable form, including fine pieces or pellets, or a fibrous form),
consisting of ground, shredded, cut or crushed tobacco and one or more aerosol forming agents ([0016] The flavour-release medium may be any material which can be heated to release a vapour for inhalation by a user. The flavour-release medium may be tobacco or a tobacco material and may be impregnated with a vapour-forming medium such as propylene glycol. The flavour-release medium could take any suitable form, including fine pieces or pellets, or a fibrous form. Propylene glycol 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 ([0016], The flavour-release medium may be tobacco or a tobacco material and may be impregnated with a vapour-forming medium such as propylene glycol).
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 Gill to form the agglomerated structure taught by Reevell because Reevell and Gill are directed to aerosol generating substrates, Reevell states that the aerosol forming agent may be propylene glycol (Reevell, [0066]-[0067]), Gill teaches tobacco particles impregnated with propylene glycol (Gill, [0016]), Gill demonstrates that the tobacco particles impregnated with propylene glycol can be heated to produce a aerosol for inhalation (Gill, [0004]), and this involves substituting one set of tobacco particles for another to yield predictable results.
Reevell in view of Gill 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), Karstens, directed to aerosol generating articles ([0001]-[0004]), teaches a tobacco constituent releasing component ([0023], Fig. 1; HNB smoking article 1 comprises two rod-shaped segments 2 and a connecting element 5. The rod-shaped or cylindrical segments 2 can have any cross-sectional shape, such as a circular, star-shaped or even angular or oval cross-sectional shape. The segments 2 are formed here by a heating segment 3 and a tobacco segment 4 made of shaped tobacco. HNB smoking article 1 is heated to release a constituent of the shaped tobacco material as an aerosol) comprising:
an agglomerated structure formed from a precursor composition comprising tobacco particles and one or more aerosol forming agents ([0045], Fig. 6; The cited sections show a manufacturing provide for producing dimensionally stable tobacco segments 4, wherein tobacco particles and additives such as glycerin and flavor-altering substances are mixed and formed into a shape. The dimensionally stable tobacco segments 4 are a form of reconstituted tobacco. Reconstituted tobacco is a term that encompasses any tobacco material formed by the agglomeration of particles of tobacco material; see Batista, [0006]);
wherein the tobacco particles comprise one or more tobacco constituents ([0023], [0045]; 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 ([0023], Fig. 1; HNB smoking article 1 comprises two rod-shaped segments 2 and a connecting element 5. The rod-shaped or cylindrical segments 2 can have any cross-sectional shape, such as a circular, star-shaped or even angular or oval cross-sectional shape. The segments 2 are formed here by a heating segment 3 and a tobacco segment 4 made of shaped tobacco).
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 Gill 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 Karstens because Reevell, Gill, and Karstens are directed to aerosol generating articles, Karstens demonstrates that star-shaped cross section is a suitable alternative for a tobacco constituent releasing component comprising an agglomerated structure (Karstens, [0023]), and changing the cross section of the tobacco constituent releasing component from circular to star-shaped 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 Gill and Karstens 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 Gill and Karstens 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 Gill and Karstens teaches a tobacco constituent releasing component as claimed in claim 1. Karstens further teaches the component wherein the component has a cross-sectional shape of a spoked wheel or a star ([0023], Fig. 1; HNB smoking article 1 comprises two rod-shaped segments 2 and a connecting element 5. The rod-shaped or cylindrical segments 2 can have any cross-sectional shape, such as a circular, star-shaped or even angular or oval cross-sectional shape. The segments 2 are formed here by a heating segment 3 and a tobacco segment 4 made of shaped tobacco).
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 Gill and Karstens discloses a structurally and compositionally equivalent product.
Regarding Claim 7, Reevell in view of Gill and Karstens 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 Gill and Karstens teaches a tobacco constituent releasing component as claimed in claim 1. Gill 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 ([0016] The flavour-release medium may be any material which can be heated to release a vapour for inhalation by a user. The flavour-release medium may be tobacco or a tobacco material and may be impregnated with a vapour-forming medium such as propylene glycol. Propylene glycol is an aerosol forming agent; see instant specification, pg 2, ln 16-17).
Regarding Claim 9, Reevell in view of Gill and Karstens 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 Gill and Karstens 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 Gill and Karstens 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 Gill and Karstens 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 Gill and Karstens 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 Gill and Karstens teaches a tobacco constituent releasing component as claimed in claim 1. Gill further teaches a tobacco constituent releasing component wherein the precursor composition does not include a basic pH adjusting agent ([0016]-[0037], Gill does not mention including a basic pH adjusting agent in the shredded tobacco).
Regarding Claim 18, Reevell in view of Gill and Karstens 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 Gill and Karstens 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).
Regarding Claim 44, Reevell in view of Gill and Karstens teaches a tobacco constituent releasing component as claimed in claim 1. Reevell further teaches a tobacco constituent releasing component wherein one or more inner channels extend through the agglomerated structure ([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).
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 Gill (US 2017/0156403 A1) and Karstens (WO 2019/141373 A1, English Translation), as applied to claim 1, and further in view of Klipfel (US 2019/0380376 A1).
Regarding Claim 17, Reevell in view of Gill and Karstens 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 Gill and Karstens 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
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
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