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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 25 September 2025 has been entered.
Status of the Claims
This office action is in response to Applicant’s amendment filed on 25 September 2025:
Claims 2, 3, 5 and 7-12 are pending
Claims 2, 3 and 5 are amended
Claims 7-12 are withdrawn
Claims 1, 4, 6 and 13-16 are cancelled
Response to Amendment
Applicant's amendments to the claims filed 25 September 2025 have been acknowledged. The objection to Claims 15 and 16 are withdrawn due to cancellation of the claims.
Response to Arguments
Applicant's arguments filed 25 September 2025 have been fully considered but they are not persuasive.
On Pages 5-7 of Applicant’s Remarks, Applicant argues that Jung does not disclose the weight percentages of extract or fibers, or grammage of paper. Examiner notes that Applicant’s arguments are directed to Claim 1 which has been cancelled. However, Examiner will review this argument in view of Claim 2 which has been amended to included similar recited details.
In regards to this argument being directed to Claim 2, Examiner finds it moot as Jung was not relied upon for the extract, fiber, or paper grammage/weight. Examiner relied upon Lamblin for the teaching of the weight percentages of extract or fibers, or grammage of paper.
On Pages 7-9 of Applicant’s Remarks, Applicant has amended the claims to recite a narrower range for tobacco, eucalyptus, or star anise extract, and paper grammage. Applicant argues that the ranges disclosed by Lamblin for the paper grammage and plant extracts are so broad that it could be considered as a selection of genera, while also seemingly providing some kind of selection probability for choosing a range within a range disclosed by Lamblin.
Examiner does not find this argument convincing because while Applicant’s Specification does disclose a set of narrower ranges, they are one of many disclosed ranges that are within Applicant’s broader claimed range. Applicant’s Specification also fails to provide any supporting evidence or details for why selecting these smaller ranges within an already suitable range would be nonobvious and/or critical.
Furthermore, it should be noted that Applicant’s specification states that Applicant’s functionalized paper is capable of conferring desired organoleptic properties on the aerosol, which is similar to the benefit that Lamblin discloses for their own paper made from reconstituted plant material with plant extracts (Lamblin, Page 4, Lines 158-171). If Lamblin’s disclosed ranges for the plant extracts and paper grammage is capable of achieving similar results (i.e., conferring organoleptic properties to the aerosol), selecting a smaller range within said broader disclosed range is expected to yield the same result as the larger range, which is to provide organoleptic properties to the aerosol. The Examiner also notes that while the Applicant argues that Lamblin teaches a broader range, that overlaps and/encompasses the claimed range, the Applicant has not shown that the narrower claimed range is critical and has unexpected results which would be rebut the case of prima facie obviousness.
On Pages 8-9 of Applicant’s Remarks, Applicant argues that the rationale for the substitution of Jung’s paper with Lamblin’s paper is a false syllogism fallacy, equivalent to stating that because a dog and cat are both mammals, the dog is a cat.
Examiner respectfully disagrees, noting that Applicant does not provide any further evidence or arguments explaining why Jung and Lamblin’s disclosed papers would be considered non-analogous. Both Lamblin and Jung discloses a reconstituted plant sheet formed from leaf material such as tobacco, comprising a fibrous substrate, aerosol-generating material, and cellulose fibers. Considering that Lamblin and Jung both teach a reconstituted sheet with similar components, Examiner finds it reasonable to consider both to be analogous to each other and not wholly different like a cat versus a dog.
The following is a modified rejection based on amendments to the claims.
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.
Claims 2, 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al (Publication No. US20210127741A1 cited in IDS filed on 23 July 2024), in view of Lamblin et al (Publication No. FR3070237A1 cited in IDS dated 23 July 2024, hereinafter referring to the provided English Translation).
Regarding Claim 2, Jung discloses a vaping (i.e., aerosol-generating) article comprising:
an aerosol-generating zone (Tobacco rod 210) (Fig. 2A; [0041]);
a zone for cooling (Cooling segment 220) the aerosol (Fig. 2A; [0041, 0051]);
said zone for cooling further comprising:
a paper in the shape of a hollow tube (Wrapper 252/254) (Fig. 2; [0041]; hollow tube shape implied as the wrapper is a sheet that wraps around a rod-shaped vape article);
and a functionalized paper (i.e., Tobacco sheet) included in the zone (210) for cooling the aerosol [0054];
said paper in the shape of a hollow tube further comprising a filtering zone (Filter segment 230/240) (Fig. 2; [0064, 0072]);
said functionalized paper further comprising:
a fibrous substrate comprising cellulose fibers [0054-0055];
Jung does not disclose that the paper in the shape of a hollow tube further comprises a fibrous substrate. However, it is well-known in the art that paper is a fibrous substrate.
Jung also does not disclose the functionalized paper further comprising the following:
between 25% and 30% of tobacco, eucalyptus, or star anise extract extract by weight of dry matter of said functionalized paper;
and between 15% and 30% of glycerin by weight of dry matter of said functionalized paper;
the functionalized paper has a grammage between 65 g/m2 and 100 g/m2.
Regarding (I-III), Lamblin, directed to a reconstituted plant sheet (i.e., paper) for use in a heating/aerosol device, discloses said sheet is formed from plant fibers (i.e., fibrous substrate) by a papermaking process (Lamblin, Pg. 7, Lines 276-277) to the following specifications:
between 12% and 45% of tobacco extract by dry matter weight (Pg. 3, Lines 98-107; overlaps with the claimed range of 25%-30%);
between 15% and 25% of glycerin by dry matter weight (Pg. 2, Lines 57-65; overlaps with the claimed range of 15%-30%);
and has a weight (i.e., grammage) between 60 g/m2 to 125 g/m2 (Pg. 3, Lines 120-122; overlaps with the claimed range or 65-100 g/m2).
The claimed ranges for the plant extract, aerosol-generating agent, and grammage overlap with the ranges disclosed by Lamblin 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 substitute the tobacco sheet in the cooling zone with the reconstituted plant sheet/paper disclosed by Lamblin, as both are directed to a sheet/paper embedded with aerosol-generating agents, where Lamblin teaches the advantage of using an aerosol-generating agent embedded reconstituted plant sheet to allow the user to inhale tobacco aromas while significantly reducing exposure to harmful constituents (Lamblin, Pg. 4, Lines 24-25); this also involves substitution of a known fibrous paper (i.e., cellulose/tobacco) with another known fibrous paper (i.e., plant fiber) to a similar device to yield predictable results.
Regarding Claim 3, Lamblin discloses the fibrous substrate of the paper (i.e., reconstituted plant fiber sheet) in the shape of a hollow tube has a grammage of between 80 g/m2 and 180 g/m2 (Lamblin, Pg. 3, Lines 120-122; discloses an overlapping range of 20 g/m2 to 150 g/m2 and is therefore considered prima facie obvious).
Regarding Claim 5, Modified Jung further discloses the fibers of the fibrous substrate of the paper in the shape of a hollow tube of the cooling zone can be chosen from cellulose fibers (Lamblin, Pg. 6, Lines 269-270), plant fibers (Lamblin, Pg. 6, Lines 269-270), and mixtures thereof.
Conclusion
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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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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