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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 July 2026 has been entered.
Status of the Claims
This office action is in response to Applicant’s amendment filed on 27 July 2026:
Claims 1-18 and 20-23 and 26-27 are pending
Claims 1 and 21 are amended
Claims 26-27 are new
Claims 19 and 24-25 are cancelled
Response to Amendment
Applicant's amendments to the claims filed 27 July 2026 have been acknowledged. The rejection to Claims 19 under 35 U.S.C. 103 is withdrawn due to cancellation of the claim.
Response to Arguments
Applicant’s arguments filed 27 July 2026, with respect to the rejection(s) of Claim(s) 1 and 21 under 35 U.S.C. 103 have been fully considered and are persuasive.
On Pages 5-8 of Applicant’s Remarks, Applicant has amended the claims to further recite that the infusing liquid is oil-free and argues that Brunson’s disclosed process teaches away from an oil-free infusing liquid as it primarily addresses the infusion of oil-based extracts.
Examiner agrees with the Applicant and therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Greenbaum (Publication No. US20210000166A1).
Applicant's arguments filed 27 July 2026 have been fully considered but they are not persuasive.
On Pages 7-9, Applicant argues that one would not substitute Brunson’s process with the vacuum infusion step disclosed in Mishra because they are not equivalent processes. Applicant further argues that Mishra primarily discusses solid additive inserts and the use of a dual pressurizing process wherein positive pressure is used for initial infusion which is followed by a vacuum step for removal of liquids. This is not the same as using solely vacuum and/or low pressure for infusing additive into a substance.
Examiner respectfully disagrees because Mishra while solid additive inserts are mentioned, Mishra also notes that a liquid additive can be provided and infused into a material [0035]. Similarly, while Mishra does discuss using a combination of pressurizing and vacuum processes to infuse a method, this is merely one way of infusing that was disclosed along with vacuum infiltration which is explicitly stated as a method for infusing an additive. In the case where vacuum infiltration is used, this would be recognized by one ordinarily skilled in the art to be similar/equivalent to the vacuum step disclosed by Brunson wherein only negative pressure is used to infuse/infiltrate a material.
On Pages 9-10 of Applicant’s Remarks, Applicant argues that one would not be motivated to modify Brunson with Novotny’s vacuum infusion process because Novotny does not teach any advantage to infusing a liquid mixture at higher temperatures. Applicant specifically argues that heating the chamber only provides the advantage of better additive/supplement dispersal and does not state that a higher temperature improves dispersion relative to a lower temperature.
Examiner notes that the Applicant’s argument provides the motivation for one ordinarily skilled in the art to adjust the temperature of the infusion step in the chamber to above 20 degrees Celsius; one ordinarily skilled in the art would be motivated by the advantage that Novotny’s process provides to adjust the temperature in Brunson’s process and does not need nor require the specific advantage that Applicant is arguing for.
On Page 10 of Applicant’s Remarks, Applicant argues that Novotny employs a materially different delivery mechanism from that of the claimed process because Novotny injects the liquid supplement to be aerosolized before introducing it into the chamber.
Examiner respectfully disagrees, noting that Applicant’s claim recites “combining the aerosol-producing substrate with an infusing liquid”, wherein the term “combining” is considered broad; one ordinarily skilled in the art would reasonably broadly interpret “combining” to refer to any method of incorporating the liquid into the substrate. In this respect, Novotny’s process does exactly that as it is a process for infusing supplement into a material by infusing the aerosolized solution into the material by spraying and applying a vacuum to combine the two together.
On Pages 11-12 of Applicant’s Remarks, Applicant argues that the pressure ranges Novotny discloses for the infusion step is specific to infusing aerosolized reagent that is present in the chamber which is materially different and not the same as employing a pressurizing step on a material that is already combined with infusing liquid. Applicant notes that these ranges are not arbitrary and are specific to the non-oil liquid.
Examiner respectfully disagrees because the term “combining” can be broadly reasonably interpreted by one ordinarily skilled in the art as any method of placing the infusing liquid with the substrate. In this case, Novotny achieves “combining” by adding an aerosolized liquid reagent with a substrate in a chamber. This is followed by a pressure change to further infuse the two materials together which reads along the same limitations recited in Applicant’s claims (i.e., combine the liquid and substrate in a chamber and then pressurize it).
Furthermore, while Applicant claims the pressure ranges are specific to the non-oil infusing liquid, there is lack of specific evidence in Applicant’s specifications. Examiner notes that Novotny states that adjusting pressure, time and temperature can be done to improve the infusion process and thus, one ordinarily skilled in the art would be motivated to do such routine optimizations based on Novotny’s disclosed pressure ranges to arrive at the Applicant’s claimed range for optimal infusion unless evidence of the contrary is provided.
On Pages 13-16 of Applicant’s Remarks, Applicant argues the inclusion of Rousseau, Turner, and Tesfatsion for the disclosure of the substrate composition because they do not explicitly state that the composition accounts for an oil-free substrate or liquid. Primarily, Applicant argues that since none of the prior art explicitly mentions that the infusion liquid or substrate are oil-free, one cannot make the assumption that it is since that is only one of many possibilities and possibilities do not establish disclosure.
Examiner respectfully disagrees because Applicant has also failed to conclusively prove that Rousseau, Turner, and Tesfatsion’s disclosure would teach away from an oil-free substrate or infusing liquid. Since said prior arts generally mention that water-soluble extracts can be used, it is implicitly understood that the extract can be oil-free unless evidence of the contrary can be provided by the Applicant.
On Pages 14-15 of Applicant’s Remarks, Applicant argues that weight must be placed on the process disclosed by the applicant as the liquid/substrate mixture would be impacted by the reduced pressure in addition to the use of a non-oil infusion liquid. Specifically, Applicant presents the argument that the infusion distribution of additive plays a significant factor in the structural characteristics of the resulting aerosol-producing material.
Examiner notes that while Applicant’s specification provides experimental data for the quantity of infused CBD and other additives in substrate material, there is no data that is presented on distribution or structural changes in the aerosol-producing material. There is also no discussion on how distribution of the additive is impacted by the method. As such, the significance of the distribution lacks support and evidence.
Though Applicant seems to argue a difference between uptake in additive between a vacuum versus a non-vacuum process, it should be noted that Rousseau was capable of achieving similar compositions which supports that the product would not be reliant upon the method.
Below 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 1-6, 8-15, 17 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Uren (Publication No. US20160366926A1) in view of Mishra et al (Publication No. US20080029106A1), Novotny (Publication No. US20210052753A1) and Turner (Publication No. US20150181925).
Regarding Claim 1, Uren discloses a process for incorporating (i.e., infusing) an additive (i.e., CBD and/or flavoring) into an aerosol-producing substrate (i.e., Reconstituted leaf sheet) (Fig. 3; Abstract, [0015]) comprising:
combining the aerosol-producing substrate (i.e., Reconstituted leaf sheet) with an infusing liquid (i.e., Application solution) (Figs. 3, 6-7; [0015, 0020-0022]; Flavorings and CBD/THC are combined together; flavor application is applied via solution);
the infusing liquid (i.e., Application solution) comprising the additive (CBD/THC/Flavoring) dissolved in a solvent (Ethyl Alcohol) (Figs. 3, 6-7; [0015, 0020-0022];);
the solvent (30) having a boiling point of 120 degrees Celsius or less ([0020-0021]; discloses ethyl alcohol/ethanol as a solvent; one ordinarily skilled in the art is aware that ethyl alcohol/ethanol has a boiling point of less than 120 degrees Celsius; Applicant also discloses that ethanol is a suitable solvent);
and drying the reconstituted leaf sheet to produce reconstituted leaf (Fig. 3).
Uren does not disclose the following:
subjecting the aerosol-producing substrate and infusing liquid mixture to reduced pressure sufficient to cause the additive to infuse into the aerosol-producing substrate;
the reduced pressure infusion occurs at a temperature above 20 degrees Celsius;
and separating the infusing liquid (60) and the aerosol-producing substrate.
Regarding (I), Mishra, directed to infusing smoking articles with additives, discloses a process for infusing heatable smoking article inserts (i.e., aerosol-generating substrate) [0004, 0017-0018] through a variety of methods for infusing a solid or liquid additive [0048]. Mishra specifically notes that the additive can be infused/immobilized into inserts using methods such as high-pressure infusion, vacuum (i.e., reduced pressure) infiltration, or combinations of any of these.
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 infusion process disclosed by Uren to infuse additives using a vacuum infiltration (i.e., reduced pressure) step instead of a high-pressure infusion step as disclosed by Mishra, as both are directed to a process for infusing additives into, where this involves substituting a known infusion method step (i.e., high pressure infusion) with another known infusion step (i.e., vacuum infiltration) to predictably result in a method that can infuse additives into an aerosol-generating substrate via reduced pressure (i.e., vacuum infiltration).
Regarding (II), Novotny, directed to an infusion method for infusing plant matter product such as cannabis or tobacco (i.e., aerosol-generating substrate) [0004, 0008, 0032], discloses a sub-atmosphere (i.e., reduced pressure) infusion process using a vacuum chamber to submit plant matter and liquid reagent/supplement (i.e., infusing liquid) to reduced pressure [0004, 0008, 0050-0056].
Novotny notes that infusion efficacy can depend on temperature and/or pressure [0082], wherein once the product (i.e., cannabis) is placed into the vacuum chamber, the chamber can be pre-heated to a temperature ranging from 20-55 degrees Celsius to provide an environment in which subsequently-introduced supplements/additives can become evenly dispersed in the chamber ([0049]; pre-heating before the vacuum infusion implies that the infusion occurs around the pre-heated temperature; Novotny’s disclosed temperature range is above 20 degrees Celsius).
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 infusion process disclosed by Modified Uren to have the vacuum infusion occur around 20-55 degrees Celsius (i.e., above 20 degrees Celsius) as disclosed by Novotny, as both are directed to a vacuum/low-pressure infusion process for aerosol-generating/smokable substrates, where Novotny teaches the advantage of pre-heating the infusion chamber to higher temperatures to provide an environment in which supplements/additives can become evenly dispersed in the chamber [0049].
Regarding (III), Turner, directed to an infusion process for infusing terpenoid (i.e., additive) into an herbal smoking blend (i.e., aerosol-generating substrate), discloses that once the smoking herb has been dipped, soaked or immersed in the terpenoid infusion liquid, the infused smoking herb can be subsequently dried ([0041, 0043, 0046]; drying the smoking herb would imply that the herb is removed from the infusion liquid should it be applied via soaking or immersion).
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 infusion method disclosed by Modified Uren to combine the solution and cannabis substrate via dipping or soaking, then removing it before performing the drying step as disclosed by Turner, as both are directed to a liquid infusion method for infusing additives into an aerosol-generating substrate, where one ordinarily skilled in the art can reasonably apply a dipping and removing step to combine the solution and substrate prior to drying in a known liquid infusion method as disclosed by Turner, to another similar liquid infusion method disclosed by Modified Uren, to predictable yield an aerosol-generating substrate that has been infused with additives.
Regarding Claim 2, Uren further discloses the additive comprising a cannabidiol (CBD) [0015]. Uren does not disclose the additive comprising a cannabinoid [0068].
However, it should be noted that CBD, a similar compound, is derived from the cannabis plant [0015].
In that regard, Turner, directed to an infusion process for infusing terpenoid (i.e., additive) into an herbal smoking blend (i.e., aerosol-generating substrate), discloses that Cannabis comprises of a large class of phytocannabinoids which have been isolated and associated with therapeutic effects [0013]. Amongst this group of chemicals, specific ones derived from Cannabis includes cannabichromene, cannabinol, cannabigerol, tetrahydrocannabivarin, and cannabidivarin [0013-0015].
Therefore, it would have been obvious to one ordinarily skilled in the art that the additive disclosed in Uren may incorporate additional specific cannabinoids derived from Cannabis such as cannabichromene, cannabinol, cannabigerol, tetrahydrocannabivarin, and cannabidivarin as disclosed by Turner, as both are directed to a process for infusing cannabinoid additives into herbal smoking blends, where Turner teaches the advantage of incorporating cannabinoids such as cannabichromene, cannabinol, cannabigerol, tetrahydrocannabivarin, and cannabidivarin for their associated therapeutic effects [0013-0015].
Regarding Claim 3, Uren further discloses the additive comprising a cannabidiol [0015].
Regarding Claim 4, Uren does not explicitly disclose the additive comprise of cannabichromene, cannabinol, cannabigerol, tetrahydrocannabivarin, and cannabidivarin or mixtures thereof. However, it should be noted that CBD, a similar compound, is derived from the cannabis plant [0015].
In that regard, Turner, directed to an infusion process for infusing terpenoid (i.e., additive) into an herbal smoking blend (i.e., aerosol-generating substrate), discloses that Cannabis comprises of a large class of phytocannabinoids which have been isolated and associated with therapeutic effects [0013]. Amongst this group of chemicals, specific ones derived from Cannabis includes cannabichromene, cannabinol, cannabigerol, tetrahydrocannabivarin, and cannabidivarin [0013-0015].
Therefore, it would have been obvious to one ordinarily skilled in the art that the additive disclosed in Uren may incorporate additional specific cannabinoids derived from Cannabis such as cannabichromene, cannabinol, cannabigerol, tetrahydrocannabivarin, and cannabidivarin as disclosed by Turner, as both are directed to a process for infusing cannabinoid additives into herbal smoking blends, where Turner teaches the advantage of incorporating cannabinoids such as cannabichromene, cannabinol, cannabigerol, tetrahydrocannabivarin, and cannabidivarin for their associated therapeutic effects [0013-0015].
Regarding Claim 5, Uren further discloses the additive comprising tetrahydrocannabinol (THC) [0015].
Regarding Claim 6, Uren further discloses that the additive comprises a flavoring [0015].
Regarding Claim 8, Uren further discloses the solvent contained in the infusing liquid comprises of an alcohol ([0015]; Ethyl alcohol, also known as ethanol).
Regarding Claim 9, Uren further discloses the solvent contained in the infusing liquid (i.e., Application solution) comprises of ethanol ([0015]; Ethyl alcohol, also known as ethanol).
Regarding Claim 10, Uren further discloses the aerosol-producing substrate (i.e., cannabis product) comprises tobacco (Abstract, [0021]; discloses that tobacco can be further incorporated into the cannabis product).
Regarding Claim 11, Uren further discloses the aerosol-producing substrate (i.e., cannabis product) comprises cannabis (Abstract).
Regarding Claim 12, Uren further discloses that the aerosol-producing substrate comprises a reconstituted material derived from one or more plant products ([0015]; the product is a reconstituted cannabis material; Uren also notes that tobacco can be added which means the reconstituted material would be derived from more than one plant product as it has both cannabis and tobacco).
Regarding Claim 13, Uren further discloses the aerosol-producing substrate comprises tobacco ([0015]; cannabis product can contain tobacco).
Regarding Claim 14, Uren further discloses the aerosol-producing substrate comprises cannabis ([0015]; cannabis product contains cannabis).
Regarding Claim 15, Uren further discloses the aerosol producing substrate (20) comprises a botanical filler (Abstract, [0021]; discloses that tobacco can be further incorporated into the cannabis product; tobacco is a botanical plant).
Regarding Claim 17, Modified Uren further discloses the aerosol-producing substrate (i.e., cannabis product) is immersed in the infusing liquid (i.e., Application solution) (see Claim 1 rejection for full modification; Uren was modified by Turner to combine the solution and substrate via spraying, dipping or soaking processes which are all considered forms of immersion).
Regarding Claim 18, Uren further discloses a step of drying the additive infused, aerosol-producing substrate (i.e., cannabis product) (Fig. 3; discloses a drying step after the infusion step).
Regarding Claim 26, Modified Uren does not explicitly disclose that the reduced pressure is from 350 mmHg to 700 mmHg. However, it should be noted that the courts have held that, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (see MPEP § 2144.05.II).
However, Novotny, directed to an infusion method for infusing plant matter product such as cannabis or tobacco (i.e., aerosol-generating substrate) [0004, 0008, 0032], discloses a sub-atmosphere (i.e., reduced pressure) infusion process using a vacuum chamber to submit plant matter and liquid reagent/supplement (i.e., infusing liquid) to reduced pressure [0004, 0008, 0050-0056].
Novotny notes that infusion efficacy can depend on temperature and/or pressure [0082]. Novotny’s process specifically discloses that once the product (i.e., cannabis) is placed into the vacuum chamber, the chamber can be evacuated to a base pressure of between 3 to 750 torr ([0048-0056]; torr is equivalent to mmHg; claimed range is 350 to 700 mmHg). The claimed range(s) for vacuum infusion overlap with the range(s) disclosed by Novotny 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 infusion process disclosed by Modified Uren to have the vacuum infusion occurs at the claimed lower pressure range that overlaps with Novotny’s claimed pressure range, as both are directed to a vacuum/low-pressure infusion process for aerosol-generating/smokable substrates, where one ordinarily skilled in the art would reasonably expect that operating Modified Uren’s vacuum infusion step at the low pressure ranges disclosed by Novotny will predictably result in successful infusion of additives into an aerosol-generating substrate/smoking herb.
Claims 7 is rejected under 35 U.S.C. 103 as being unpatentable over Uren (Publication No. US20160366926A1) in view of Mishra et al (Publication No. US20080029106A1) and Novotny (Publication No. US20210052753A1) as applied to Claim 1 above, and further in view of Turner (Publication No. US20150181925) and Rousseau et al (Pub. No. US20200253264A1).
Regarding Claim 7, Modified Uren further discloses a drying step after the infusion step (Uren, Fig. 3; discloses a drying step after the infusion step). Modified Uren does not disclose the aerosol-producing substrate contains the additive after the infusion and after drying in an amount greater than about 3.1 % by weight and less than about 70% by weight.
However, Rousseau, directed to a reconstituted cannabis material (i.e., aerosol-generating substrate), discloses the treatment of reconstituted plant material such as cannabis with water-soluble cannabis extract (i.e., additive) such that the reconstituted material contains an amount up to about 60% and generally in an amount greater than about 0.5% [0017-0019, 0055]. The extraction can occur using an ethanol extract, implying that the solution can be oil-free ([0024, 0041]; since the extract is water-soluble and also can be extracted with a non-oil alcohol solvent, it is implicitly understood that the solution can essentially be oil-free).
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness (see MPEP § 2144.05.I).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Uren (Publication No. US20160366926A1) in view of Mishra et al (Publication No. US20080029106A1) and Novotny (Publication No. US20210052753A1) as applied to Claim 1 above, and further in view of Basker et al (Publication No. US20090297671A1).
Regarding Claim 16, Modified Uren does not disclose an additional step wherein remaining (i.e., residual) infusing liquid (i.e., Application solution) is contacted with a new substrate (i.e., cannabis product) and the process repeated.
However, Basker, directed to a method for pressurized infusion of fruits and vegetables (i.e., herb plant), discloses a method of infusing dextrin fiber solutes (i.e., additives) into plant matter (i.e., herb plant) by preparing an infusion liquid containing the desired solutes with water (i.e., solvent) and combining said infusion liquid with the desired food/plant product (Fig. 1; [0016-0017, 0023-0024]).
Once combined, the solutes from the infusion liquid are infused into the substrate/plant food using vacuum infusion and subsequently separated from the infusion solution (Fig. 1; [0029-0030]; vacuum infusion implies reduced pressure infusion). Basker also discloses that when the infusing liquid is removed from the vegetable/plant material, remaining infusing liquid/solution is conveyed to a collection tank for reconcentration and reused on further batches of vegetable material (i.e., new substrate) [0030].
It is noted that while Basker does not explicitly disclose a vacuum infusion method for an aerosol-producing substrate, Basker discloses that the infused material is a food product made from plants such as vegetables. In that regard, Modified Uren discloses an infusing process for infusing plant material such as tobacco and cannabis (see Claim 1 rejection for full modification of Uren to have vacuum infusion; Uren, [0015]; the infused material is plant material such as cannabis and tobacco). Both Modified Uren and Basker discloses a vacuum infusion method for infusing plant-based materials with additives.
As such, one ordinarily skilled in the art would have a reasonable expectation that the vacuum infusion method for infusing plant-based materials (i.e., plant food) disclosed by Basker can be utilized by Uren to also successfully infuse another plant-based material (i.e., cannabis and tobacco) to produce an additive-infused plant product.
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 method disclosed by Modified Uren to include an additional step of repeating the infusion process with remaining (i.e., residual) infusing liquid on new substrate/plant material as disclosed in Basker, as both are directed to infusing a plant/herb material, where one ordinarily skilled in the art could apply Basker’s teachings of recycling/reusing infusing liquid disclosed in one known infusion method, to another similar infusion method disclosed by Modified Uren, and reasonably expect that Modified Uren’s method will be able to reuse remaining infusing liquid to successfully infuse more aerosol-producing substrate.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Uren (Publication No. US20160366926A1) in view of Mishra et al (Publication No. US20080029106A1) and Novotny (Publication No. US20210052753A1) as applied to Claim 1 above, and further in view of Tesfatsion et al (Pub. No. US20230165298A1).
Regarding Claim 20, Modified Uren does not explicitly disclose the additive is incorporated into the aerosol-producing substrate at a concentration higher than the concentration of the additive in the infusing liquid.
However, it should be noted that the discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
In that regard, Tesfatsion, directed to an infused aerosol-generating material, discloses infusing tobacco with varying concentrations of menthol additive [0165-0171]. The tobacco Blend 101 with added menthol of 2.5 and 5% concentrations contained higher menthol concentrations than the initial menthol infusion substance (2.97% and 5.03% respectively) ([0171]; see Data Table). Although the menthol was in the form of discrete particles [0165], Tesfatsion further mentions that the menthol can be in liquid form [0131-0132].
Therefore, it would have been obvious to one ordinarily skilled in the art before
the effective filing date of the claimed invention, to modify Modified Uren’s process such that the additive is infused at a higher concentration than the initial infusing material as disclosed by Tesfatsion, where Tesfatsion teaches the advantage of having additive infused at a higher concentration than the initial infusing material to generate an aerosol-generating material that can more readily release active substances [0171).
Claims 21-23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Rousseau et al (Pub. No. US20200253264A1).
Regarding Claim 21, Rousseau discloses an aerosol-producing material comprising:
an aerosol-producing substrate in the form of a strip, strips, shreds, or mixtures thereof, the aerosol-producing substrate being made from at least one plant (Abstract, [0039, 0074]);
and an additive (i.e., cannabis extract) that has been infused into the aerosol-producing substrate [0055];
the additive being present in the aerosol-producing substrate in an amount greater than about 3.1 % by weight [0017-0019, 0055];
and the aerosol-producing substrate being free of oils ([0026, 0041,0083]; Extracts can be water-based; the extracts can also use an alcohol solvent like ethanol, indicating that the infusing solution can be free of oils).
Rousseau does not disclose that the additive is incorporated into the aerosol-producing substrate by a process comprising:
combining the aerosol-producing substrate with an infusing liquid, the infusing liquid comprising the additive dissolved in a solvent, the solvent having a boiling point of 120 degrees Celsius or less;
the additive incorporation further comprising subjecting the aerosol-producing substrate and infusing liquid mixture to reduced pressure sufficient to cause the additive to infuse into the aerosol-producing substrate at a temperature above about 20 degrees Celsius;
and separating the infusing liquid and the aerosol-producing substrate.
Regarding (I-III), it should be noted that even though product-by-process claims are limited by and defined by the process, the determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (see MPEP § 2113.I).
In this case, Rousseau discloses all details of the Applicant’s aerosol-generating material product such as its shape/form (i.e., strips) and additive, wherein the substrate is oil-free and the additive is present in said substrate in an amount greater than about 3.1 % by weight (see rejection above).
Since the Applicant’s product is the same as the product disclosed by Rousseau, Applicant’s claimed product is not considered patentable despite its different production process.
Regarding Claim 22, Rousseau further discloses wherein the aerosol-producing substrate comprises a tobacco or a cannabis [0035].
Regarding Claim 23, Rousseau further discloses wherein the additive comprises cannabidiol [0085-0086].
Regarding Claim 27, Rousseau does not disclose that in the process for producing the claimed aerosol-generating substrate, the reduced pressure is from 350 mmHg to 700 mmHg.
However, it should be noted that even though product-by-process claims are limited by and defined by the process, the determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (see MPEP § 2113.I).
In this case, Rousseau discloses all details of the Applicant’s aerosol-generating material product such as its shape/form (i.e., strips) and additive, wherein the substrate is oil-free and the additive is present in said substrate in an amount greater than about 3.1 % by weight (see rejection above).
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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