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 .
Response to Amendment
Applicant’s amendment filed October 22, 2025 has been entered.
Claims 1-5, 7-8, and 10-14 remain pending in the application.
This action is non-final due to the addition of the Hui reference (see below)
Response to Arguments
Applicant’s arguments, see pages 5-6 of Remarks, filed October 22, 2025, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 have been fully considered and are persuasive. The previously applied prior art failed to explicitly disclosed adjustment of porosity. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hui (WO 2021/068464, reference to US 2023/0049209).
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, 8, and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kühn et al. (WO 2020/244996, reference to US 2022/0330396) in view of Chapman et al. (US 5,690,127), Alarcon et al. (US 2021/0068444), Bottacco et al. (WO 2021/144043, reference to US 2022/0346433), and Hui (WO 2021/068464, reference to US 2023/0049209).
Regarding claims 1, 4, 10, and 12, Kühn discloses a method of manufacturing a vaporizable product for use in an atomizer (aerosol-forming sample for use in a vaporizer device, abstract, also see Figure 11 showing the device accepting a cigarette-like rod, [0114]-[0117]), comprising:
wherein the product comprises a conductive agent, and wherein the conductive agent comprises carbon nanotube (this is a claim 12 limitation) (aerosol-forming substrate comprises carbon nanotubes, [0053]).
Kühn fails to explicitly disclose the method steps including: grinding a vaporizable material (but possible vaporizable materials such as tobacco disclosed in [0031]); forming a paste utilizing the ground vaporizable material; and extruding the paste to form the vaporizable product wherein extruding the paste comprises: applying pressure to the paste to pass the paste through a mold; and cutting the extruded paste.
Chapman teaches a cigarette including the manufacturing steps of grinding a vaporizable material (tobacco (vaporizable material) is ground into small pieces, col.9 lines 15-16); forming a paste utilizing the ground vaporizable material (liquid is added to ground material to obtain a paste, col. 9 lines 19-20); and extruding the paste to form the vaporizable product (the paste mixture is then extruded and used as a vaporizable product, col. 9 lines 20-25) wherein extruding the paste comprises: applying pressure to the paste to pass the paste through a mold (Chapman, a piston extruder (which uses pressure to push material through a mold), is used, col. 9 lines 57-60); and cutting the extruded paste (Chapman, after extrusion the rods are dried and cut, col. 9 lines 61-62). Chapman teaches that this cigarette improves the combustion characteristics due to the amount of wet particulate matter being reduced (abstract).
One of ordinary skill in the art would be motivated to find a method to make a cigarette such as the one shown in the device of Kühn in Figure 11 in order to test the device as desired.
Therefore, 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 Kühn to incorporate the teachings of Chapman to have used the cigarette of Chapman (and therefore the methods of making the vaporizable material) in the Kühn device because doing so would have improved the combustion characteristics of the cigarette due to the amount of wet particulate matter being reduced, as recognized by Chapman (abstract).
Kühn also fails to disclose wherein the vaporizable material comprises cannabis flower (claim 1 limitation) and glycerin in an amount in a range of about 10 to about 50% by weight (this is a claim 10 limitation).
Alarcon teaches a similar vaporizable material (which may be a paste, [0021]) which comprises cannabis flower (feed stock for all experiments consisted of various types of cannabis flower, [0323]), and wherein the paste comprises glycerin (listed as glycerol in Alarcon) in an amount from about 20% to 25% (see various examples from Table 2, which show many different amounts of glycerol in different examples, which are then mixed with minimal amounts of cannabis flower from Table 1). Alarcon also teaches that the compositions of the invention provide desirable organoleptic properties and therapeutic effects (abstract).
Therefore, 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 Kühn in view of Chapman to incorporate the teachings of Alarcon to provide a paste comprising cannabis flower and glycerin in an amount from about 20% to 25% because doing so would provide desirable organoleptic properties and therapeutic effects, as recognized by Alarcon (abstract).
Kühn also fails to disclose applying heat to the paste (claim 1 limitation), at a temperature in a range of from about 50 °C to about 200 °C (claim 4 limitation), and that the pressure applied to the paste is in the range of from about 1 bar to about 15 bar (claim 4 limitation).
Bottacco teaches similar method for producing a tobacco containing paste and film, wherein during extrusion, the tobacco paste is brought to a temperature between 20 °C and 60 °C, and a pressure of between 10 bar and 40 bar (see [0016]), both of which overlap with the claimed ranges presented in claim 4. Bottacco also teaches that the advantage of the above temperature and pressure ranges are that if the tobacco paste is exposed to elevated temperatures and pressures, the flavor and consistency of the tobacco paste are compromised ([0016]).
Therefore, 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 Kühn in view of Chapman to incorporate the teachings of Bottacco to include during extrusion, the tobacco paste is brought to a temperature between 20 °C and 60 °C, and a pressure of between 10 bar and 40 bar, which overlap with the claimed ranges of and these ranges are advantageous because if the paste is exposed to elevated temperatures and pressures, the flavor and consistency of the tobacco paste are compromised, as recognized by Bottacco [0016].
Kühn (and the modifications above) also fails to disclose that the porosity of paste is adjusted during heating and/or applying pressure to the paste.
Hui teaches a similar heat-not burn aerosol generating article wherein the paste is extruded and heated (extrusion (which applies pressure) disclosed in [0050] and heated disclosed in at least [0030]) and that these steps (among others) provide a specific porosity of 40-75% (see [0030], heating forms the specific porosity (meaning it is “adjusted”) and paste is extruded to keep the desired porosity (see [0050])). Hui also teaches that this paste stick with pores help to have the aerosol pass to the human mouth smoothly and having a reasonable and uniform porosity creates a certain suction resistance during the smoking process that is similar to the suction resistance of cigarette smoking (abstract and [0015]).
Therefore, 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 Kühn to incorporate the teachings of Hui to adjust the porosity of the paste though heating and/or applying pressure because doing so helps to have the aerosol pass to the human mouth smoothly and having a reasonable and uniform porosity creates a certain suction resistance during the smoking process that is similar to the suction resistance of cigarette smoking, as recognized by Hui (abstract and [0015]).
Regarding claim 3, modified Kühn teaches the method of claim 1, wherein forming the paste comprises treating the ground vaporizable material with water (Chapman, ground tobacco is mixed with aqueous (water-containing) medium to form a paste, col. 9, lines 15-20),
a binding agent (Chapman, ground tobacco could be mixed with mixed aqueous/non-aqueous medium (e.g. water and propylene glycol) where propylene glycol is the binding agent (listed as a binding agent in instant application, see specification [0010]), col. 6 lines 41-48),
and/or a combination thereof (Chapman teaches the addition of water and a binding agent, as set forth above).
Regarding claim 5, modified Kühn teaches the method of claim 1, wherein the paste comprises a binding agent, and wherein the binding agent comprises propylene glycol (Kühn, tobacco material mixed with propylene glycol, [0071]).
Regarding claim 8, modified Kühn teaches the method of claim 1, wherein the paste comprises a binding agent, and wherein the binding agent comprises vegetable glycerin (Kühn, tobacco material mixed with glycerol (same as glycerin), [0071]).
Regarding claim 11, modified Kühn teaches the method of claim 1, wherein the vaporizable product comprises a cylindrical-shaped body (Kühn, Figure 11, sample 2 and sample material 102 are in a cylindrical shape).
Regarding claims 13 and 14, modified Kühn teaches the method of claim 1, wherein the adjustment of the porosity allows for a larger aerosol mass and an increase in a release of cannabinoids when heated and vaporized, and the adjustment of the porosity allows for an increase in vaporization rate and efficiency of the vaporizable product thereby conserving an increased amount of total energy utilized by the atomizer (since the rejection of claim 1 above meets the limitation of adjusting the porosity of the paste, it would logically follow that this adjustment would also cause these limitations to be met).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kühn et al. (WO 2020/244996, reference to US 2022/0330396) in view of Chapman et al. (US 5,690,127), Alarcon et al. (US 2021/0068444), Bottacco et al. (WO 2021/144043, reference to US 2022/0346433), and Hui (WO 2021/068464, reference to US 2023/0049209) as applied to claim 1 above, and further in view of Sandnes et al. (US 2021/0114038).
Regarding claim 2, modified Kühn discloses the method of claim 1, as set forth above. Kühn fails to disclose that the method further comprises cooling the vaporizable material prior to grinding the vaporizable material.
Sandnes teaches a similar plant preparation process including cooling the vaporizable material prior to grinding the vaporizable material (Figure 1, preparation (cooling) apparatus 100 is before grinding apparatus 102, [0032]). Sandnes also teaches that cooling before grinding can freeze water in the plant materials which enhances the susceptibility of the plant materials to fracturing during grinding [0029].
Therefore, 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 method of Kühn in view of Chapman to incorporate the teachings of Sandnes by adding a cooling step before grinding the material because doing so would allow for the freezing of water in the plant materials which enhances the susceptibility of the plant materials to fracturing during grinding, as recognized by Sandnes [0029].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kühn et al. (WO 2020/244996, reference to US 2022/0330396) in view of Chapman et al. (US 5,690,127), Alarcon et al. (US 2021/0068444), Bottacco et al. (WO 2021/144043, reference to US 2022/0346433), and Hui (WO 2021/068464, reference to US 2023/0049209) as applied to claim 1 above, and further in view of Shannon et al. (US 5,211,684).
Regarding claim 7, modified Kühn discloses the method of claim 1, as set forth above. Modified Kühn fails to disclose wherein the paste comprises a conductive agent and wherein the conductive agent comprises aluminum nitride.
Shannon teaches a similar smoking article containing a ceramic material (which may include aluminum nitride, see list in col. 3 lines 43-63), and this material can be mixed with the aerosol forming (i.e. vaporizable) materials (col. 9 lines 30-35). Shannon also teaches the advantage of including a catalytic composition including aluminum nitride (or similar) substantially decreases the amount of carbon monoxide in the mainstream smoke during smoking (abstract).
Therefore, 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 Kühn in view of Chapman to incorporate the teachings of Shannon to include aluminum nitride in the vaporizable material because doing so would substantially decreases the amount of carbon monoxide in the mainstream smoke during smoking, as recognized by Shannon (abstract).
Conclusion
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/A.Z.B./
Examiner, Art Unit 1747 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755