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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/07/2025 has been entered.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 10/07/2025 containing
remarks to the claims.
Status of the Claims
Claims 1-10, 12-19 and 21-22 are pending and are subject to this Office Action. Claims 7-10, 12-19, and 21 have been withdrawn. Claim 1 has been amended.
Response to Arguments
Applicant’s arguments, see 6-7, filed 10/07/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC 103 have been fully considered and are persuasive. The applicant has amended claim 1 with the new limitation of wherein the article further comprises a ventilation region configured to enable air to flow into an interior of the article from an exterior of the article, and the ventilation region provides a ventilation ratio of at least 20%, which was previously not required. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously applied art and newly found art.
In specific regard to the Applicant’s arguments on pages 7-9 with respect to claim(s) 1 in regard to Mironov have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alexis (EP2625975A1) in view of Mironov (WO2015/176898, cited in IDS dated 9/10/21), Ibrahim (US2018/0360099), and Uthurry (WO2020/128048).
Regarding claim 1, Alexis, directed to an aerosol-generating system, discloses:
An aerosol generating article (aerosol-generating article 10) comprising an aerosol generating material (aerosol-forming substrate 20, figure 1, [0050]) which comprises nicotine ([0002]) and an aerosol generating agent ([0034], aerosol former).
An aerosol generating device comprising a heater (aerosol-generating device comprises a heating element [0063]), wherein during operation, the article is inserted into the device and an aerosol is generated by using the heater to heat the aerosol generating material to at least 150°C ([0063]-[0064], 375°C).
Wherein at least (i) 10 ug of nicotine, and (ii) 10 ug of the aerosol generating agent, is aerosolized from the aerosol generating material under an airflow of at least 1.50L/m during a two-second period (15 puffs were taken, each of 55mL in volume and 2 second puffs duration [0077]-[0078], which equates to an airflow of 1.65 L/m during a two second period. The per puff nicotine and glycerine deliveries are shown in figures 8 and 9 [0087]-[0089], which shows greater than 10 ug of nicotine and glycerine in each puff, see figures 8-9).
Alexis does not appear to disclose (I) wherein the heater is an induction heater, (II) wherein a weight ratio of the aerosol generating agent to nicotine is at least about 2.5:1, and (III) wherein the article further comprises a ventilation region configured to enable air to flow into an interior of the article from an exterior of the article, and the ventilation region provides a ventilation ratio of at least 20%.
In regard to (I), Mironov, directed to an aerosol-generating system, teaches:
An aerosol generating device (200) that comprises an induction heater (inductor 210). When an aerosol-generating article is correctly located in the substrate receiving cavity of the device, the susceptor is heated. The heated susceptor heats the aerosol-forming substrate of the aerosol-generating article to a sufficient temperature to form an aerosol, for example about 340 degrees Celsius (pages 14-15, lines 36-37 and lines 1-11).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Alexis by incorporating the induction heating system as taught by Mironov, because both Alexis and Mironov are directed to aerosol-generating systems, Mironov teaches the induction heating system heats the substrate to a sufficient temperature to form an aerosol, and this merely involves incorporating a known type of heater for aerosol-generating articles (i.e. induction heating) to a similar aerosol-generating system to yield predictable results.
In regard to (II), Alexis teaches that the aerosol-forming substrate may be a solid aerosol-forming substrate comprising a tobacco material such as tobacco leaf, extruded tobacco, and reconstituted tobacco ([0035]). Alexis is silent to the amount of aerosol generating agent and nicotine in the aerosol-forming substrate, and thus silent to the weight ratio of the aerosol generating agent to nicotine.
Ibrahim, directed to a tobacco compositions for a tobacco heating product, teaches:
A tobacco composition comprising an aerosol generating agent in an amount of 10 to 20% by weight of the tobacco composition, and a nicotine content of from 0.5 to 1.5% by weight of the tobacco composition [0005]. Thus Ibrahim teaches an aerosol-forming substrate with a weight ratio of aerosol generating agent to nicotine of between 6.67:1 and 40:1. The range taught by the prior art falls within the claimed range of at least about 2.5:1.
The tobacco component may contain reconstituted tobacco [0005] and a component selected from leaf tobacco, extruded tobacco, bandcast tobacco, and mixtures thereof [0006].
Therefore, as Alexis is silent to the amount of aerosol generating agent and nicotine in the aerosol-forming substrate, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of aerosol-forming substrates, that one of ordinary skill could apply to Alexis with a reasonable expectation of success in the substrate having a suitable weight content of aerosol generating agent and nicotine. As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate to Alexis the aerosol-forming substrate having a weight ratio of aerosol generating agent to nicotine of between 6.67:1 and 40:1 as taught by Ibrahim, because both Alexis and Ibrahim are directed to aerosol-generating substrates comprising tobacco, and this merely involves incorporating a known amount of aerosol generating agent and nicotine to a similar tobacco substrate to yield predictable results.
The ratio of 6.67:1 and 40:1 falls within the claimed range of at least about 2:5 to 1 and is therefore considered to be prima facie obvious.
In regard to (III), Uthurry, directed to an aerosol generating article, teaches:
An aerosol-generating article that comprises a ventilation zone (page 14, third paragraph). This rapidly reduces the temperature of the aerosol mixture (page 14, last paragraph). As such the ventilation zone defines a ventilation region configured to enable air to flow into an interior of the article from an exterior of the article.
The ventilation zone has an advantageous effect on the nucleation and growth of aerosol particles (page 16, fourth paragraph).
The ventilation level is preferably at least 20 percent (page 16, second paragraph). As the ventilation level denotes a volume ratio between of the airflow admitted into the aerosol-generating article via the ventilation zone (page 5, second paragraph), the ventilation level defines a ventilation ratio.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the article of Alexis by incorporating a ventilation region configured to enable air to flow into an interior of the article from an exterior of the article, and the ventilation region provides a ventilation ratio of at least 20% as taught by Uthurry, because both Alexis and Uthurry are directed to aerosol generating articles, Uthurry teaches the ventilation region reduces the temperature of the mixture and has an advantageous effect on the nucleation and growth of the aerosol particles, and this merely involves incorporating a known aerosol generating article element (i.e. ventilation region) to a similar aerosol generating article to yield predictable results.
Regarding claim 2, Alexis further teaches wherein the aerosol generating material is solid and comprises tobacco ([0034]-[0038]).
Regarding claim 3, modified Alexis further teaches:
Wherein during operation, an aerosol is generated by using the induction heater to heat the aerosol generating material to at least 150°C (wherein the aerosol-forming substrate is heated to a temperature of about 375°C. [0063]-[0064]).
Wherein the total amount of nicotine aerosolized from the aerosol generating material during at least 7 two-second periods, under an airflow of at least 1.50L/m, is at least about 0.20 mg ([0077]-[0078], [0087]-[0089], Fig. 8 – wherein the sum of puffs 1-7 would yield at least 0.43mg).
Regarding claim 4, modified Alexis further teaches:
Wherein during operation, an aerosol is generated by using the induction heater to heat the aerosol generating material to at least 150°C (wherein the aerosol-forming substrate is heated to a temperature of about 375°C. [0063]-[0064]).
Wherein the total amount of nicotine aerosolized from the aerosol generating material during at least 7 two-second periods, under an airflow of at least 1.50L/m, is at least about 0.43 mg ([0077]-[0078], [0087]-[0089], Fig. 8 – wherein the sum of puffs 1-7 would yield at least 0.43mg).
Regarding claim 5, modified Alexis further teaches:
Wherein during operation, an aerosol is generated by using the induction heater to heat the aerosol generating material to at least 150°C (wherein the aerosol-forming substrate is heated to a temperature of about 375°C. [0063]-[0064]).
Wherein the total amount of aerosol generating agent aerosolized from the aerosol generating material during at least 7 two-second periods, under an airflow of at least 1.50L/m, is at least about 2 mg ([0077]-[0078], [0087]-[0089], Fig. 9 – wherein the sum of puffs 1-7 would yield at least 2 mg)
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alexis (EP2625975A1) in view of Mironov (WO2015/176898, cited in IDS dated 9/10/21), Ibrahim (US2018/0360099), and Uthurry (WO2020/128048) as applied to claim 1 above, and further in view of John (US2016/0295922).
Regarding claim 6, modified Alexis further teaches:
Wherein during operation, an aerosol is generated by using the induction heater to heat the aerosol generating material to at least 150°C (wherein the aerosol-forming substrate is heated to a temperature of about 375°C. [0063]-[0064]).
Wherein the aerosol generating agent is aerosolized from the aerosol generating material during at least 9 two-second periods, under an airflow of at least 1.50L/m ([0077]-[0078], [0087]-[0089])
Alexis does not appear to explicitly disclose wherein during operation, the total amount of aerosol generating agent aerosolized from the aerosol generating material is at least about 5 mg during at least 9 two second periods, under an airflow of at least 1.5 L/m.
John, directed to an aerosol generating device and article, teaches:
An aerosol generating article with similar aerosolizable materials, such as tobacco and glycerin ([0064]-[0065]; [0075]-[0077]).
A greater quantity and concentration of an aerosol generating agent may be included so that a greater quantity of aerosol is generated on heating ([0066]).
Wherein the aerosol generating agent is aerosolized from the aerosol generating material under an airflow of at least 1.50L/m ([0244] – 80 ml over 3 seconds equates to 1.60L/m).
Wherein the total amount of aerosol generating agent aerosolized from the aerosol generating material is at least about 5 mg ([0248]-[0252], Table 8 – 13.81 mg glycerol).
As such, John is reasonably considered to teach that the amount of aerosolized aerosol generating agent can be controlled and increased by modifying the concentration and quantity of aerosol generating agent in the aerosol generating article.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Alexis by increasing the quantity and concentration of aerosol generating agent in the aerosol generating article in order to effect the total amount of aerosol generating agent aerosolized during operation as taught by John and optimize the quantity and concentration of agent in the article to achieve a desired amount of aerosolized material during operation, because both Alexis and John are directed to similar aerosol generating systems, John teaches that the amount of aerosolized agent can be controlled by changing the quantity and concentration of agent in the article, and this merely involves optimizing a result effective variable through routine experimentation.
Given that it would be obvious to optimize the quantity and concentration of agent in the article to achieve a desired amount of aerosolized material during operation, it would further be obvious for one having ordinary skill in the art to determine a workable quantity and concentration of aerosol generating agent in the article to achieve a total amount of aerosol generating agent aerosolized of at least about 5 mg through routine experimentation and thus it would be reasonable for one having ordinary skill in the art to operate the system of Alexis, in view of Mironov and John, under similar conditions such that the system of Alexis would result in a total amount of aerosolized aerosol generating agent of at least about 5mg.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Alexis (EP2625975A1) in view of Mironov (WO2015/176898, cited in IDS dated 9/10/21), Ibrahim (US2018/0360099), and Uthurry (WO2020/128048) as applied to claim 1 above, and further in view of Sakurai (WO2020/115898, citations will refer to the English version US2021/0244084).
Regarding claim 22, Alexis further teaches that the solid aerosol-forming substrate may comprise reconstituted tobacco ([0034]). Alexis is silent to the amount of reconstituted tobacco that the aerosol generating material comprises.
Sakurai, directed to a non-combustible heating-type smoking article, teaches:
The rod 14 (i.e. smoking article) includes a tobacco part 24 filled with the tobacco filler 23 ([0028], figure 2).
The range of the content of the tobacco filler 23 in the tobacco part 24 can be from 225 to 380 mg ([0043]).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to look to other known teachings of tobacco amounts in aerosol generating articles that one of ordinary skill could apply to Alexis with a reasonable expectation of success in the amount of tobacco being suitable for a smoking article, and make the amount of tobacco in the aerosol-forming substrate of Alexis be 225 – 380 mg as taught by Sakurai. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP § 2144.07.
The range taught by the prior art falls within the claimed range of about 220mg to about 400 mg and is therefore considered to be prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571) 270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755