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 Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/30/2026 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 1/30/2026.
Claim 9 is amended.
Claims 1-8 and 15 are cancelled.
Claim 16 is newly added.
Claims 9-14 and 16 are pending.
The Examiner withdraws the objection to claim 9 for minor informalities due to Applicant’s amendment filed 1/30/2026.
Response to Arguments
Applicant' s arguments, see page 7, filed 1/30/2026, with respect to the rejection of claims 9-14 under 35 U.S.C. 103 as being unpatentable over Ergle in view of Nagai, Sugyo, Jakob, Metrangolo and alternatively in further view of Shafer have been fully considered and are persuasive. Applicant has amended claim 9 to include the limitation “a cooling element formed of paper and having a cooling function.” The prior art of record fails to disclose such a limitation. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited prior art.
Claim Objections
Claim 16 is objected to because of the following informalities:
Regarding claim 16, the claim limitation “group consisting of acetic acid starch, hydroxypropyl phosphate distarch, hydroxypropyl phosphate, phosphate distarch, monolithic phosphate, phosphate diphosphate” should be changed to “group consisting of acetic acid starch, hydroxypropyl phosphate distarch, hydroxypropyl phosphate, phosphate distarch, monolithic phosphate, and phosphate diphosphate” for grammatical correctness.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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 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 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ergle et al. (US 2009/0038629; of record) in view of Nagai et al. (US 2020/0297027; of record), Sugyo et al. (US 2019/0274349; of record), Jakob et al. (US 5129408; of record), Metrangolo et al. (US 2015/0107610; of record), and Luo et al. (US 2021/0315268) and alternatively in further view of Shafer (US 5388595; of record).
Regarding claim 9, Ergle discloses a flavor-bearing sheet (“fragrance-containing sheet”) for the controlled delivery of volatile flavorants in a smoking article (abstract), the smoking article is a cigarette (para. 2) configured to combust (para. 14, 25) comprising:
a tobacco column includes a smokable material comprising shredded tobacco filler (para. 2, 15; “first portion comprising a tobacco material”) and the flavor-bearing sheet being dispersed in the tobacco column (para. 14); and
a filter (para. 15; “second portion comprising a filter element”),
wherein the filter is attached at the mouth or buccal end of the tobacco column (para. 54; “arranged in series along a longitudinal axis of the smoking article”),
wherein the flavor-bearing sheet comprises a solvent such as water (para. 44) and having a final moisture content depending on the thickness of the flavor-bearing sheet (para. 46; “moisture”); a film-forming coagulating material including polyols, polymeric ethers, polymeric esters, natural polymers and derivatives thereof (para. 14, 27), wherein suitable natural polymers include carrageenan, gelatin, gum agar, locust bean gum, guar gum, acacia, gum arabic, xanthan gum and pectin (para. 31); and a volatile flavorant (para. 14, 34; “fragrance”).
Furthermore, Ergle discloses that flavor sheets may contain one or more nonvolatile flavorants such as powdered tobacco (para. 42) and that the flavor sheets are shredded to form smokable materials (para. 48).
However, Ergle is silent as to a low methoxyl pectin containing less than 50% of carboxyl groups. Specifically, Ergle does not disclose what form the pectin is in.
Nagai teaches a filler for a smoking article (abstract) comprising a gel comprising pectin obtained by subjecting a gelling agent to an acid treatment, the pectin having a degree of esterification of 12% or less (para. 18), and thus has less than 12% galacturonic acid and galacturonic acid methyl esters with α-1,4-bonds (para. 61; i.e., “less than 50% of carboxyl groups”), wherein pectin is generally classified into LM-pectin which has a degree of esterification of less than 50% and HM-pectin has a degree of esterification of 50% or more (para. 61), and wherein the gelation property is stronger in pectin having a longer degree of esterification (para. 62).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have specified the type of pectin in Ergle to be LM-pectin as in Nagai in because (a) such a modification is obvious to try because there are only two finite number of pectin forms with a reasonable expectation of success of forming a filler material for a tobacco rod and (b) such a modification is beneficial because LM-pectin is preferred for production suitability, durability, and low odor in the side stream smoke (Nagai; para. 12, 17-18).
Moreover, modified Ergle is silent as to a thickening polysaccharide selected from the group consisting of tamarind gum, konjac glucomannan, psyllium seed gum, and cassia gum.
Sugyo teaches a flavor-containing sheet for a smoking article (abstract) comprising a thickening polysaccharide, a flavor, an emulsifier, and a filler (abstract), wherein the thickening polysaccharide may include a single-component system such as carrageenan, agar, xanthan gum, gellan gum, psyllium seed gym, or konjac glucomannan; or a combined system of a combination of two or more components selected from the group consisting of carrageenan, locust bean gum, guar gum, agar, gellan gum, tamarind gum, xanthan gum, tara gum, konjac glucomannan, starch, cassia gum, and psyllium seed gum ([0026]-[0027]).
It would have been obvious to said skilled artisan to have combined Ergle’s natural polymers (including carrageenan, gelatin, gum agar, locust bean gum, guar gum, acacia, gum arabic, xanthan gum and pectin) with Sugyo’s thickening polysaccharides including tamarind gum, konjac glucomannan, psyllium seed gum, and cassia gum (see MPEP 2144.06(I)), or alternatively to have substituted Ergle’s natural polymers for Sugyo’s thickening polysaccharides including tamarind gum, konjac glucomannan, psyllium seed gum, and cassia gum (see MPEP 2144.06(II)), because (a) both are equivalents known for the same purpose of providing forming an encapsulating film (Ergle, [0027]); Sugyo; [0026], describing the thickening polysaccharide fixes and coats a flavor), and (b) such a combination would yield the predictable result of improving characteristics of the encapsulating material by improving the storage stability of the flavor associated with the added tamarind gum, konjac glucomannan, psyllium seed gum, and cassia gum (Sugyo; [0003], [0006]).
Furthermore, modified Ergle is silent as to wherein the first portion comprises a first compartment comprising an aerosol generating substrate and a second compartment comprising a nicotine generating substrate comprising the tobacco material.
Jakob teaches a cigarette (title), the cigarette (10; Fig. 2, 4) comprises a generally cylindrical rod (15) including a first segment (70) of smokable material and a second segment (75) of smokable material (col. 4, ll. 31-54) circumscribed by an outer wrapping material (25; “first compartment” and “second compartment” corresponding to the space occupied by the first segment and the second segment respectively) wherein the first segment normally includes tobacco in the form of cut filler (reconstituted tobacco filler materials) (col. 4, ll. 55-62; “nicotine generating substrate comprises the tobacco material”), and the second segment includes a smokable material different in overall composition from the first segment (col. 5, ll. 2-8), and wherein the smokable material is cast as a sheet and has aerosol forming materials (e.g., glycerin, propylene glycol, and the like) in an amount of preferably about 3 to about 15 percent by weight (col. 2, l. 63-col. 3, l. 14; col. 6, ll. 1-10; “aerosol generating substrate”), and the cut filler is formed into strands or shreds (col. 5, ll. 33-51).
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 Ergle’s shredded tobacco filler for Jakob’s to fill a second segment containing smokable material, and further adding first segment containing smokable material in order to provide a good tasting cigarette with a relatively low mainstream gas stream yields, low levels of incomplete combustion, sustains smolder under FTC smoking conditions, and generates low levels of sidestream tar and hence low levels of visible sidestream smoke (Jakob; col. 2, ll. 20-27).
Moreover, modified Ergle is silent as to wherein the aerosol generating substrate comprises crimped paper impregnated with aerosol generating material and containing no tobacco material.
Metrangolo teaches an aerosol-generating article (title). Metrangolo teaches that shredding tobacco material undesirably generates tobacco fines and other wastes, the shredded tobacco material exhibits loose ends that cause loss of the tobacco material form the ends of the rod, and shred of tobacco exhibit high weight standard deviations ([0005]-[0007]). To solve this problem, Metrangolo teaches providing a first sheet comprising tobacco material a second sheet (i.e., “aerosol generating substrate”) comprising a non-tobacco flavorant comprising a non-tobacco sheet such as a paper sheet ([0014]; “paper” and “containing no tobacco material”) impregnated with the non-tobacco flavorant ([0015]) and additionally comprises an aerosol-former such as glycerine that carries flavor components into an aerosol ([0018]) (both the flavorant and the aerosol-former, together or separately, are considered to be “aerosol generating material”) wherein the second sheet is crimped ([0037]-[0038]) and gathered ([0011]).
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 form of the smokable material from being a cut filler as in Ergle to be a crimped sheet that is gathered as in Metrangolo because (a) Jakob’s cut filler are shreds that would exhibit traditional problems of loose ends and non-uniform density; and (b) such a modification would result in reducing loose ends while exhibiting more uniform density (Metrangolo; [0045]).
Lastly, modified Ergle is silent as to the second portion comprising a cooling element formed of paper and having a cooling function.
Luo teaches a cooling cigarette filter (abstract) comprising a filter section (1; Fig. 1), a cooling section (2; “cooling element”), and a smoke generation section (3), wherein the cooling section is formed by wrapping a cooling stick (201; Figs. 2 and 4) with a wrap paper (4; [0050]), wherein the cooling stick is mainly formed by paper (5; “formed of paper”) coated with a phase change cooling material ([0050]) such that after smoke enters the cooling section, it is in full contact with the phase change cooling material which improves the cooling effect of the smoke and facilitates a rapid and smooth passing of the smoke generated in the cigarette ([0054]; “cooling function”).
It would have been obvious to said skilled artisan to have added the cooling section of Luo to modified Ergle’s cigarette in order to obtain the predictable result of facilitating the rapid cooling of smoking passing through the cigarette with the benefit of improving the comfort and satisfaction of smoking due to the lower temperature smoke (Luo; abstract).
Regarding the claim limitation “wherein the smoking article generates an aerosol when inserted in and heated by an aerosol generating device,” the word "when” is considered to make the limitation a contingent limitation. Under broadest reasonable interpretation (BRI) a claim having a contingent limitation requires structure for performing the function should the condition occur. MPEP 2111.04(II). Here, the claim does not actually require inserting the smoking article into an aerosol generating device. Rather, the claim merely requires that "when" the smoking article is inserted into an aerosol generating device, it generates an aerosol. Given that modified Ergle's cigarette normally produces smoke via combustion (para. 14, 25; smoke is an aerosol), the cigarette is capable of producing smoke when inserted into an aerosol generating device.
If the limitation "wherein the smoking article generates an aerosol when inserted in and heated by an aerosol generating device" were considered a positive limitation, which it is not, Shafer discloses a second-hand smoke filtering device (10) comprising a cigarette (20) which is lighted by an igniter (24; Fig. 10).
Alternatively, it would have been obvious to have combined Shafer's device with modified Ergle's cigarette in order to better control the generating and filtering of cigarette smoke and second-hand cigarette smoke (Shafer; col. 1, ll. 28-33).
Regarding claim 10, modified Ergle discloses wherein the LM-pectin has a degree of esterification of 12% or less (para. 63) and thus has less than 12% galacturonic acid and galacturonic acid methyl esters with α-1,4-bonds (para. 61).
Regarding the claim limitation “LM-pectin does not gel when cooled at room temperature,” since modified Ergle discloses the use of LM-pectin, which is identical in structure and composition to the claimed “LM-pectin,” modified Ergle’s LM-pectin is expected to exhibit the property of “not gel[ing] when cooled at room temperature.” Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112.01(I).
Regarding claim 11, modified Ergle discloses the flavor-bearing sheet having a moisture content of 10% and 15% respectively for different thickness sheets (see para. 46; within the “2 to 15 parts by weight of moisture”), the film-forming coagulating material comprise between 15-80% by weight (para. 33) wherein suitable natural polymers include pectin (para. 31), and gellan gum (Mishra; [0063]), and the volatile flavorant typically comprise between 10-75% by weight, preferably between 20-30% by weight (para. 35; within the “0.1 to 60 parts by weight of the fragrance”).
However, modified Ergle does not explicitly teach 1 to 60 parts by weight of the thickened polysaccharide and 1 to 60 parts by weight of the LM-pectin. Specifically, Ergle does not disclose how to apportion the amount of thickening polysaccharide and pectin within the 15-80% by weight teaching.
It would have been obvious to one of ordinary skill in the art to have chosen different weight percentages of the gellan gum and pectin to achieve a total film-coagulating material weight percentage of 15-80% that are within the claimed “1 to 60 parts” of the thickening polysaccharide and the LM-pectin respectively because such a modification involves optimization within prior art conditions or through routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." MPEP 2144.05(II)(A).
Regarding claim 12, modified Ergle discloses the suitable natural polymers include konjac glucomannan (Sugyo; [0026]-[0027]).
Regarding claim 13, modified Ergle discloses that the film-forming coagulating material may comprise a polyol (para. 27) including glycerol and glycerin (para. 28; “aerosol former”), that the sheet may include humectants (para. 43; also commonly known as “aerosol formers”), and that the solvent to prepare the sheet may also include ethanol or glycerin (para. 44; also “aerosol formers”).
Regarding claim 14, modified Ergle discloses that the flavor-bearing sheets formed have a thickness typically ranging from about 2 mil to about 5 mil (para. 46; equivalent to 0.0508 mm to 0.127 mm; within the “0.01 mm to 0.3 mm” range).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Ergle et al. in view of Nagai et al., Sugyo et al., Jakob et al., Metrangolo et al., and Luo et al. and alternatively Shafer, as applied to claim 9 above, and further in view of White (US 2015/0209530).
Regarding claim 16, modified Ergle discloses the smoking article as discussed above with respect to claim 9 comprising the flavor-bearing sheet having the film-forming coagulating material in the form of natural polymers ([0027]), wherein suitable natural polymers further include without limitation starch and starch derivatives ([0031]), and wherein the flavor-bearing sheets are prepared from solutions or emulsions comprising the film-forming coagulating material, volatile flavorants, and a solvent ([0044]).
However, modified Ergle is silent as to the smoking article further comprising one or more bulking agents selected form the group consisting of acetic acid starch, hydroxypropyl phosphate distarch, hydroxypropyl phosphate, phosphate distarch, monolithic phosphate, and phosphate diphosphate. Specifically, modified Ergle does not disclose what starch or starch derivatives can be used.
White teaches a substrate configured for use with an aerosol agent delivery device (abstract), the substrate (95, 98; Fig. 14C-D) is formed into a thin sheet, layer, or film ([0068]), wherein the substrate comprises a paste that is dried, which comprises a binder material that acts to hold the paste together, such as a hydrocolloid or a starch ([0014], [0073]), hydrocolloids including pectin ([0074]) and starches include distarch phosphate and hydroxypropyl distarch phosphate ([0074]; “hydroxypropyl phosphate distarch” and “phosphate distarch”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have use distarch phosphate and/or hydroxypropyl distarch phosphate as in White as modified Ergle’s starch or starch derivative in order to obtain the predictable result of holding the emulsions together and set the other materials when the emulsion is dried (White; [0073]) and because “[t]he selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” MPEP 2144.07.
Conclusion
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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