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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/16/2026 has been entered.
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.
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.
Claim(s) 17 and 20-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over LI et al (US 2016/0345621) in view of Capelli et al (US 2021/0015746).
Regarding claim 17, LI discloses a storage stable aerosolizable formulation comprising:
i. one or more aerosol-forming agents selected from the group consisting of mono- propylene glycol, di-propylene glycol, 1,3-propanediol, and mixtures thereof (Abstract ---"A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.”);
ii. water (Abstract ---A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.);
and iii. menthol in an amount of at least about 3% by weight of the aerosolizable formulation ([0081] lines 3-12 ---"The one or more flavoring additives may be included in an amount ranging from about 0.01% to about 15% by weight (e.g., about 1% to about 12%, about 2% to about 10%, or about 5% to about 8%), based on a total weight of the pre-vapor formulation. The flavoring additive can be a natural flavoring additive or an artificial flavoring additive. The flavoring additive may be one of tobacco flavor, menthol, wintergreen, peppermint, herb flavors, fruit flavors, nut flavors, liquor flavors, and combinations thereof.), and wherein the formulation is liquid ([0059] lines 3-8 ---" For example, the pre-vapor formulation may be a liquid, solid and/or gel formulation including, but not limited to, water, beads, solvents, active ingredients, ethanol, plant extracts, natural or artificial flavors, and/or vapor formers such as glycerin and propylene glycol.”).
However, LI does not teach wherein the weight ratio of the one or more aerosol forming agents to water is at least 4.29:1.
Nonetheless, Capelli who is in the same field of endeavor being formulation of aerosol generating liquids, teaches wherein the weight ratio of the one or more aerosol forming agents to water is at least 4.29:1 ([0079] Preferably the gel composition comprises an aerosol former or glycerol to water ratio in a range from about 10:1 to about 2:1, or in a range from about 5:1 to about 3:1. Preferably the gel composition comprises an aerosol former or glycerol to water ratio in a range from about 4.5:1 to about 3.5:1.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aerosolizable formulation of LI by incorporating the weight ratio of the one or more aerosol forming agents to water as taught by Capelli for the benefit of providing a range of water to glycerol content needed to maintain a gel composition. ([0078] of Capelli)
Furthermore, Capelli teaches a range of the weight ratio of the one or more aerosol forming agents to water that overlaps with the claimed range. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed invention to incorporate the range of the weight ratio of the one or more aerosol forming agents to water as taught by Capelli since it has been held that where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 20, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 17), and LI teaches wherein the one or more aerosol- forming agents is mono-propylene glycol (Abstract ---"A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.”).
Regarding claim 21, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 17), and LI teaches wherein the one or more aerosol- forming agents is present in an amount of from 60% to 95% by weight of the aerosolizable formulation ([0016] lines 6-9 ---" The amount of propylene glycol in the pre-vapor formulation may range from about 80% to about 20% by weight of the balance portion of the pre-vapor formulation.”).
Regarding claim 22, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 17), and LI teaches wherein the water is present in an amount of from I% to 20% by weight of the aerosolizable formulation ([0019] lines 1-2 ---" An amount of the water may range from about 15% to about 20% by weight.”).
Regarding claim 23, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 17), and LI teaches wherein the menthol is present in an amount of from 3.5% to 10% by weight of the aerosolizable formulation ([0081] lines 3-12 ---"The one or more flavoring additives may be included in an amount ranging from about 0.01% to about 15% by weight (e.g., about 1% to about 12%, about 2% to about 10%, or about 5% to about 8%), based on a total weight of the pre-vapor formulation. The flavoring additive can be a natural flavoring additive or an artificial flavoring additive. The flavoring additive may be one of tobacco flavor, menthol, wintergreen, peppermint, herb flavors, fruit flavors, nut flavors, liquor flavors, and combinations thereof.).
Regarding claim 24, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 17), and LI teaches wherein the aerosolizable formulation further comprises an additional aerosol-forming agent, wherein the additional aerosol- forming agent is selected from the group consisting of glycerin, sugar alcohols, polyethylene glycol, diethylene glycol, triethylene glycol, tetraethylene glycol, 1,3- butylene glycol, erythritol, meso-erythritol, ethyl vanillate, ethyl laurate, diethyl suberate, triethyl citrate, a diacetin mixture, benzyl benzoate, benzyl phenyl acetate, tributyrin, lauryl acetate, lauric acid, myristic acid, propylene carbonate, or mixtures thereof (([0104] lines 12-22 ---"The pre-vapor formulation may be prepared by preparing a mixture that includes nicotine, water, glycerin (Gly), and propylene glycol (PG) and optionally an acid and/or flavoring additive (e.g., menthol). The water may be included in an amount ranging from about 15% to about 20% by weight of the pre-vapor formulation. The weight ratio (PG-Gly) may be adjusted if the pre-vapor formulation includes menthol. For example if the pre-vapor formulation includes menthol, the weight ratio (PG-Gly) may range from about 70:30 (PG-Gly) to about 60:40 (PG-Gly).”).
Regarding claim 25, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 24), and LI teaches wherein the additional aerosol-forming agent comprises glycerin (([0104] lines 12-22 ---"The pre-vapor formulation may be prepared by preparing a mixture that includes nicotine, water, glycerin (Gly), and propylene glycol (PG) and optionally an acid and/or flavoring additive (e.g., menthol). The water may be included in an amount ranging from about 15% to about 20% by weight of the pre-vapor formulation. The weight ratio (PG-Gly) may be adjusted if the pre-vapor formulation includes menthol. For example if the pre-vapor formulation includes menthol, the weight ratio (PG-Gly) may range from about 70:30 (PG-Gly) to about 60:40 (PG-Gly).”).
Regarding claim 26, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 25), and LI teaches wherein the glycerin is present in an amount of from 0.1% to 35% by weight of the aerosolizable formulation ([0016] lines 9-11 ---" The amount of glycerin in the pre-vapor formulation may range from about 20% to about 80% by weight of the balance portion of the pre-vapor formulation.”).
Regarding claim 27, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 17), and LI teaches wherein the formulation further comprises one or more active agents (Abstract ---"A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.”).
Regarding claim 28, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 27), and LI teaches wherein the active agent is nicotine (Abstract ---"A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.”).
Regarding claim 29, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 28), and LI teaches wherein the nicotine is present in an amount of from 0.1% to 6% by weight of the aerosolizable formulation ([0018] lines 1-2 ---" The amount of nicotine may range from about 2.0% to about 3.0%.”).
Regarding claim 30, LI discloses a contained aerosolizable formulation comprising a container and a storage stable aerosolizable formulation disposed within the container ([0024] lines 1-3 ---" According to an example embodiment, a cartridge may include a housing including a liquid supply reservoir and a pre-vapor formulation in the liquid supply reservoir.”), the aerosolizable formulation comprising:
i. one or more aerosol-forming agents selected from the group consisting of mono- propylene glycol, di-propylene glycol, 1,3-propanediol, and mixtures thereof (Abstract ---"A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.”);
ii. water (Abstract ---A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.);
and iii. menthol in an amount of at least 3% by weight of the aerosolizable formulation ([0081] lines 3-12 ---"The one or more flavoring additives may be included in an amount ranging from about 0.01% to about 15% by weight (e.g., about 1% to about 12%, about 2% to about 10%, or about 5% to about 8%), based on a total weight of the pre-vapor formulation. The flavoring additive can be a natural flavoring additive or an artificial flavoring additive. The flavoring additive may be one of tobacco flavor, menthol, wintergreen, peppermint, herb flavors, fruit flavors, nut flavors, liquor flavors, and combinations thereof.) and wherein the formulation is liquid ([0059] lines 3-8 ---" For example, the pre-vapor formulation may be a liquid, solid and/or gel formulation including, but not limited to, water, beads, solvents, active ingredients, ethanol, plant extracts, natural or artificial flavors, and/or vapor formers such as glycerin and propylene glycol.”).
However, LI does not disclose wherein the weight ratio of the one or more aerosol forming agents to water is at least about 2:1.
Nonetheless, Capelli who is in the same field of endeavor being formulation of aerosol generating liquids, teaches wherein the weight ratio of the one or more aerosol forming agents to water is at least 4.29:1 ([0079] Preferably the gel composition comprises an aerosol former or glycerol to water ratio in a range from about 10:1 to about 2:1, or in a range from about 5:1 to about 3:1. Preferably the gel composition comprises an aerosol former or glycerol to water ratio in a range from about 4.5:1 to about 3.5:1.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aerosolizable formulation of LI by incorporating the weight ratio of the one or more aerosol forming agents to water as taught by Capelli for the benefit of providing a range of water to glycerol content needed to maintain a gel composition. ([0078] of Capelli)
Furthermore, Capelli teaches a range of the weight ratio of the one or more aerosol forming agents to water that overlaps with the claimed range. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed invention to incorporate the range of the weight ratio of the one or more aerosol forming agents to water as taught by Capelli since it has been held that where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 31, LI in view of Capelli teaches the formulation as appears above (see the rejection of claim 30), and LI teaches wherein the container is a cartomizer ([0024] lines 1-3 ---" According to an example embodiment, a cartridge may include a housing including a liquid supply reservoir and a pre-vapor formulation in the liquid supply reservoir.” and [0005] lines 5-7 ---"An e-vaping device may include several elements, such as a power source and a cartridge (also referred to as a cartomizer).”) adapted for use in connection with a closed electronic aerosol provision system.
Regarding claim 32, LI discloses an electronic aerosol provision system comprising:
* an aerosolizer ([0069] line 1 ---"The cartridge 70 may include a vaporizer.”) for turning a liquid into an aerosol for inhalation by a user of the electronic aerosol provision system;
* a power supply comprising a cell or battery (Fig. 1 #72 battery section) for supplying power to the aerosolizer ([0069] line 1 ---"The cartridge 70 may include a vaporizer.”); and
* a storage stable aerosolizable formulation (0077] lines 2-5 ---"Each of the pre-vapor formulations described below may be used to fill the liquid supply reservoir 22 in the e-vaping device 60 described above with reference to FIG. 1.”);
the aerosolizable formulation comprising:
i. one or more aerosol-forming agents selected from the group consisting of mono- propylene glycol, di-propylene glycol, 1,3-propanediol, and mixtures thereof (Abstract ---"A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.”);
ii. water (Abstract ---A pre-vapor formulation of an electronic vaping device includes water, nicotine, glycerin (Gly), and propylene glycol.);
and iii. menthol in an amount of at least about 3% by weight of the aerosolizable formulation ([0081] lines 3-12 ---"The one or more flavoring additives may be included in an amount ranging from about 0.01% to about 15% by weight (e.g., about 1% to about 12%, about 2% to about 10%, or about 5% to about 8%), based on a total weight of the pre-vapor formulation. The flavoring additive can be a natural flavoring additive or an artificial flavoring additive. The flavoring additive may be one of tobacco flavor, menthol, wintergreen, peppermint, herb flavors, fruit flavors, nut flavors, liquor flavors, and combinations thereof.).
However, LI does not disclose wherein the weight ratio of the one or more aerosol forming agents to water is at least about 2:1.
Nonetheless, Capelli who is in the same field of endeavor being formulation of aerosol generating liquids, teaches wherein the weight ratio of the one or more aerosol forming agents to water is at least 4.29:1 ([0079] Preferably the gel composition comprises an aerosol former or glycerol to water ratio in a range from about 10:1 to about 2:1, or in a range from about 5:1 to about 3:1. Preferably the gel composition comprises an aerosol former or glycerol to water ratio in a range from about 4.5:1 to about 3.5:1.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aerosolizable formulation of LI by incorporating the weight ratio of the one or more aerosol forming agents to water as taught by Capelli for the benefit of providing a range of water to glycerol content needed to maintain a gel composition. ([0078] of Capelli)
Regarding claim 33, LI in view of Capelli teaches the system as appears above (see the rejection of claim 32), and LI teaches wherein the aerosolizable formulation is disposed within a container (Fig. 1 #22 liquid supply reservoir).
Regarding claim 34, LI in view of Capelli teaches the system as appears above (see the rejection of claim 32), and LI teaches wherein the container is a cartomizer ([0024] lines 1-3 ---" According to an example embodiment, a cartridge may include a housing including a liquid supply reservoir and a pre-vapor formulation in the liquid supply reservoir.” and [0005] lines 5-7 ---"An e-vaping device may include several elements, such as a power source and a cartridge (also referred to as a cartomizer).”).
Regarding claim 35, LI in view of Capelli teaches the system as appears above (see the rejection of claim 34), and LI teaches the electronic aerosol provision system is a closed electronic aerosol provision system (The system of LI comprises a cartomizer, which is used in closed electronic aerosol provision systems.).
Regarding claim 36, LI in view of Capelli teaches the system as appears above (see the rejection of claim 34), but does not teach wherein the electronic aerosol provision system is an open electronic aerosol provision system.
Nonetheless, it would have been an obvious matter of design choice to have the electronic aerosol provision system being an open electronic aerosol provision system in order to construct the electronic aerosol provision system as desired, since applicant has not disclosed that having the electronic aerosol provision system being an open electronic aerosol provision system solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with the electronic aerosol provision system being a closed electronic aerosol provision system. Capelli, ([0055]), recognizes open and closed electronic aerosol provision systems as being equivalents and would operate in the same manner.
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
Applicant argues that one of ordinary skill in the art would not look to Capelli to modify Li for the weight ratio of aerosol forming agents to water at 4.29:1 because Capelli discloses a gel formulation instead of a liquid formulation. Examiner respectfully disagrees.
Li teaches a liquid formulation having the required aerosol forming agents but does not teach the weight ratio of the aerosol forming agents to water being 4.29:1. Capelli is only relied upon to teach the weight ratio of the aerosol forming agents to water being 4.29:1. Capelli also teaches numerous gelling agents [0080] used to make a liquid formulation into a gel. Capelli teaches the weight ratio of the aerosol forming agents to water being 4.29:1 and the numerous gelling agents are used to maintain an equilibrated local humidity with ambient environmental humidity. The gelling agents are not required by the liquid as taught by Li.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, only the weight ratio of the aerosol forming agents to water is being considered in the combination of Li with Capelli. Capelli teaches an overlapping range. Overlapping ranges are held to be obvious (See MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOE E MILLS JR. whose telephone number is (571)272-8449. The examiner can normally be reached M-F 8-5.
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/JOE E MILLS JR./Examiner, Art Unit 3761