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 .
Status of the Claims
This office action is in response to Applicant’s amendment filed on 30 December 2025:
Claims 15 and 19-34 are pending
Claims 32-34 are withdrawn
Claim 15 is amended
Claims 1-14 and 16-18 are cancelled
Response to Amendment
Applicant's amendments to the claims filed 30 December 2025 have been acknowledged. The rejection to Claims 16-18 under 35 U.S.C. 103 are withdrawn due to cancellation of the claims.
Response to Arguments
Applicant’s arguments filed 30 December 2025, with respect to the rejection of Claim 15 under 35 U.S.C. 102(a)(2) have been fully considered and are persuasive.
On Pages 5-7 of Applicant’s Remarks, Applicant has amended the claim to further recite that the tobacco material and substrate are substantially free of nicotine and argues that Arndt does not teach the use of a nicotine-free substrate. In fact, Arndt’s disclosure encourages the presence of nicotine for the user’s inhaling experience which would also discourage the modification to remove nicotine from the substrate as disclosed by Berger.
Examiner agrees with the Applicant’s arguments and therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sebastian et al (Publication No. US20200281249A1).
The following Applicant arguments filed 30 December 2025 have been fully considered but they are not persuasive.
On Page 6 of Applicant’s Remarks, Applicant has amended Claim 15 to include limitations from Claim 16 (henceforth cancelled), arguing that one ordinarily skilled in the art would not be motivated to modify Arndt’s disclosure with Hunt’s specific clove/flavorant range because the benefit in which Hunt’s addition of flavorant/clove is already present and discloses the same benefits as Hunt’s. Regardless, Applicant also notes that Arndt in view of Hunt would still not arrive at amended Claim 15 in light of other amendments to the claims.
Examiner respectfully disagrees, noting that the argument is moot as Examiner no longer relies on Arndt’s disclosure for the rejection of the claims. But for the clarity of the record, Examiner would like to point out that one ordinarily skilled in the art would motivation to use Hunt’s disclosure to modify Arndt even if the benefits provided is the same as the one disclosed by Arndt because Hunt’s disclosure provides a specific range for incorporating clove/flavorant to achieve the effects described by Arndt.
Thus, one would be motivated to use Hunt’s disclosure to modify Arndt because Hunt provides an explicit quantity range for incorporation so that the same effect can actually be achieved in Arndt which is silent on the quantity range that would allow them to achieve the benefits in which they describe in regards to the addition of clove to the aerosol substrate.
On Pages 7-8 of Applicant’s Remarks, Applicant argues that Claims 19, 25, and 27 should be allowable due to their dependency on Claim 15 in which they believe has been amended to be in an allowable state.
Examiner respectfully disagrees as a new rejection to the claims have been made in light of newly found prior art.
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.
Claims 15 and 19-31 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al (Publication No. US20200281249A1) in view of Deforel et al (Publication No. US20210329964A1) and Hunt et al (Publication No. US20120055494A1).
Regarding Claim 15, Sebastian discloses a substrate in sheet form for use in an aerosol delivery device (Abstract, [0009]), the substrate comprising:
tobacco material in particulate form ([0009, 0046]; substrate comprises of nanocellulose material that can be derived from tobacco material; can be in particle form);
botanical extract of Angelica root, caraway seed, cinnamon, clove, coriander seed, elderberry, elderflower, ginger, jasmine, lavender, lilac, peppermint (Menthapiperita), quince, or a combination thereof;
optionally a flavorant [0009];
a binder ([0067-0068]; substrate comprises nanocellulose material which further comprise binding material);
water ([0060]; substrate can comprise of water or other aerosol forming materials);
and an aerosol forming material [0060];
wherein the tobacco material and the substrate are substantially free of nicotine ([0009-0010]; discloses that the tobacco or substrate can be free of nicotine in certain embodiments).
Sebastian does not disclose the following:
the amount of tobacco material in the substrate is 50 to 65% by weight, based on the total wet weight of the substrate;
the amount of botanical extract is 1 to 3% by weight, based on the total wet weight of the substrate
Regarding (I), Deforel, directed to an aerosol-generating substrate, discloses said substrate is formed from particulate plant material, wherein tobacco particles comprise 60 to 90 percent by weight, based on dry weight of the substrate (Abstract). The substrate can be formed into a sheet via extrusion, wherein the moisture content (i.e., amount of water) is between 5 to 15 percent [0106].
Given the percent dry weight of tobacco particles and the moisture content percentage, the amount of tobacco particles in the substrate would range from 52.2% to 85.7% by total wet weight (lower range calculated using the higher moisture content and upper range calculated using the lower moisture content). Thus, the claimed range for tobacco particles in the substrate overlap with the range disclosed by Deforel and are therefore considered prima facie obvious (see MPEP § 2144.05.I).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the tobacco substrate and water content disclosed by Sebastian to be present in the substrate in an amount ranging from 52.2% to 85.7% by total wet weight as disclosed by Deforel, as both are directed to an extruded tobacco sheet for generating aerosols, where this involves applying a known teaching of a extruded tobacco sheet composition disclosed by Deforel to another extruded tobacco sheet composition disclosed by Sebastian, to predictably yield an extruded sheet capable of generating aerosols for users to inhale.
Regarding (II), Hunt, directed to an extruded tobacco composition, discloses that flavorants such as cinnamon, clove, cardamon, peppermint, lavender or combinations thereof can be present in the tobacco composition in amounts ranging from 0.5 to 10 percent by dry weight which can alter the sensory characteristics such as fragrance/aroma ([0040]; same components disclosed and therefore considered equivalent to botanical extracts).
In the context of Modified Sebastian, the flavoring compounds/botanical extracts and their dry weights can be converted to a range of 0.43% to 9.5% by wet weight (see rejection above for modifying Sebastian with Deforel to have a specific water weight range). Thus, the claimed range for the compound groups (i.e., cinnamon, clove, etc.) in the substrate overlap with the range disclosed by Hunt and are therefore considered prima facie obvious (see MPEP § 2144.05.I).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the botanical extracts disclosed by Sebastian to specifically be present in the substrate in an amount ranging from 0.43% to 9.5% by total wet weight as disclosed by Hunt, as both are directed to an extruded tobacco sheet for generating aerosols, where Hunt teaches the advantage of incorporating botanical extracts/flavors in these quantities to alter the sensory characteristics such as fragrance/aroma [0040]; this involves applying a known teaching of a botanical extract quantity in a tobacco composition as disclosed by Hunt, to another tobacco composition disclosed by Modified Sebastian to predictably result in a tobacco composition with imbued flavors.
Regarding Claim 19, Sebastian does not disclose the binder is present in an amount from about 5 to about 10% by weight, based on the total wet weight of the substrate.
However, Deforel, directed to an aerosol-generating substrate, discloses said substrate is formed from particulate plant material comprising tobacco particles (Abstract), wherein a binder component is also added in an amount ranging from 0.5% to 15% by dry weight to enhance the cohesiveness of the overall (tobacco composition) formulation [0044]. The substrate can be formed into a sheet via extrusion, wherein the moisture content (i.e., amount of water) is between 5 to 15 percent [0106].
Given the percent dry weight of binder and the moisture content percentage, the amount of binder in the substrate would range from 0.43% to 14.3% by total wet weight (lower range calculated using the higher moisture content and upper range calculated using the lower moisture content). Thus, the claimed range for binder in the substrate overlap with the range disclosed by Deforel and are therefore considered prima facie obvious (see MPEP § 2144.05.I).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the binder disclosed by Modified Sebastian to be present in the substrate in an amount ranging from 52.2% to 85.7% by total wet weight as disclosed by Deforel, as both are directed to an extruded tobacco sheet for generating aerosols, where Deforel teaches the advantage of using binders in the disclosed range to enhance the cohesiveness of the composition formulation [0044];this involves applying a known teaching of an extruded tobacco sheet binder composition disclosed by Deforel to another extruded tobacco sheet binder composition disclosed by Sebastian, to predictably yield an extruded sheet capable of generating aerosols for users to inhale.
Regarding Claim 20, Sebastian further discloses the binder is selected from the group consisting of alginates, starches, gums (i.e., guar gum), and combinations thereof [0067].
Regarding Claim 21, Sebastian further discloses the binder is a cellulose ether such as carboxymethylcellulose [0067].
Regarding Claim 22, Sebastian further discloses the binder is carboxymethylcellulose [0067].
Regarding Claim 23, Sebastian further discloses the aerosol forming material is selected from the group consisting of water, a polyhydric alcohol, a sugar alcohol (i.e., glycerin), and combinations thereof [0060].
Regarding Claim 24, Sebastian further discloses the aerosol forming material comprises a polyhydric alcohol selected from the group consisting of glycerol, propylene glycol, triethylene glycol, and combinations thereof [0060, 0064].
Regarding Claim 25, Modified Sebastian further discloses the water is present in an amount from about 12 to about 21% by weight, based on the total weight of the substrate (see Claim 15 rejection for modifying Sebastian with Deforel’s disclosure to have specific quantity ranges for tobacco particles and water; the disclosed water moisture content is 5% to 15% which overlaps with the claimed range and thus is considered prima facie obvious (see MPEP § 2144.05.I)).
Regarding Claim 26, Sebastian further discloses the substrate is in the form of an extruded sheet ([0009, 0027]; discloses that the substrate can be in the form of a sheet structure, wherein the substrate structure can also be an extruded structure).
Regarding Claim 27, Sebastian does not explicitly disclose the extruded sheet has a thickness from about 0.3 to about 0.8 mm.
However, Deforel, directed to an aerosol-generating substrate, discloses said substrate is formed from particulate plant material comprising tobacco particles (Abstract), wherein the substrate can be formed into a sheet via extrusion, wherein the moisture content (i.e., amount of water) is between 5 to 15 percent [0106]. The substrate can comprise of one or more sheets (such as two sheets) of homogenized plant material, each individually having a thickness between 100 to 600 micrometers ([0044]; given a two-sheet stack embodiment, the substrate thickness would range between 200 and 1200 micrometers or 0.2 and 1.2 millimeters; the disclosed range overlaps with the claimed range and are therefore considered prima facie obvious (see MPEP § 2144.05.I)).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the tobacco substrate disclosed by Sebastian to have a specific thickness overlapping range 200 and 1200 micrometers (0.2 and 1.2 millimeters when converted) as disclosed by Deforel, as both are directed to an extruded tobacco sheet for generating aerosols, where this involves applying a known teaching of an extruded tobacco sheet thickness range disclosed by Deforel to another extruded tobacco sheet disclosed by Sebastian, to predictably yield an extruded sheet with a specific thickness that is capable of generating aerosols for users to inhale.
Regarding Claim 28, Sebastian further discloses that the extruded sheet is in shredded form ([0009, 0027]; discloses that discloses that that extruded structures can be processed from materials in sheets, shreds, beads or the like; implies that the substrate can be an extruded sheet that is shredded).
Regarding Claim 29, Sebastian further discloses an aerosol delivery device (100) (Fig. 1; [0029]), comprising:
the substrate of Claim 1 (see Claim 1 rejection for full modification of Sebastian’s original substrate);
a heat source (204) configured to heat the substrate to form an aerosol (Figs. 1-2, 5-6; [0031, 0077-0078]);
and an aerosol pathway extending from the substrate to a mouth-end of the aerosol delivery device (see Figs. 1-2; [0030-0031]; the delivery device is shown to have a tubular insertion cavity for aerosol source 104 which extends to an open/mouth-end of the device; considered equivalent to an aerosol pathway).
Regarding Claim 30, Sebastian further discloses the heat source (204) comprises either a combustible ignition source (i.e., combustible fuel element) [0079].
Regarding Claim 31, Sebastian further discloses the heat source (204) is a combustible ignition source comprising a carbon-based material (i.e., combustible carbonaceous material) [0079].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ibrahim (Publication No. US20180360099A1) – Tobacco composition for use in a tobacco heating device comprising 60 to 90% tobacco by weight, 5 to 15% water moisture, filler content and flavorings. The composition can be in the form of a reconstituted sheet cut into strips or shredded and can optionally be extruded tobacco.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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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.
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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