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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/11/2026 has been entered.
Status of the Claims
Claims 1, 3-6, 8-17 and 20-25 are pending and are subject to this Office Action. Claim 17 has been withdrawn. Claim 19 has been cancelled. Claims 1 has been amended. Claim 25 is newly added.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 6/11/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 7-12, filed 6/11/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 103 have been fully considered and are persuasive. The Applicant has amended claim 1 with a new limitation requiring the total amount of setting agent adding to the slurry is from 2.5-5wt% calculated on a dry weight basis. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously applied art and newly found art.
Applicant’s arguments with respect to claim(s) 3-4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The following is a modified rejection based on amendments made to the claims.
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.
Claim(s) 1, 5-6, 8-12, 14-16, 20-21, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over John (US2016/0295922) in view of Collins (US 5,505,214), White (US 5,129,409), Ewing (US2018/0016040), and Sutton (US2015/0296868).
Regarding claims 1, 8, 15, and 25, John teaches:
A method of making an amorphous solid (aerosol generating material, [0083]) comprising: (a) forming a slurry (prepared by drying a slurry of aerosol generating material, [0084]) comprising:
3-50% of binder by weight, in some cases the binder may be sodium alginate ([0093]). The applicant teaches that alginate is a gelling agent (see page 13, first paragraph of the specification) and therefore reads on the claimed gelling agent and further claim 15 wherein the gelling agent is selected from pectins, alginates, and mixtures thereof. As the aerosol generating material may comprise between 3-10% water ([0095]), the remainder binder would be the dry weight basis. The range taught by the prior art overlaps the claimed range of 0.5 to 60 wt.% of a gelling agent and is prima facie obvious.
1-40% of an aerosol generating agent by weight ([0106]). As the aerosol generating material may comprise between 3-10% water ([0095]), the remainder aerosol generating agent would be the dry weight basis. The range taught by the prior art overlaps the claimed range of 5 to 80 wt.% of an aerosol forming material.
1-25% nicotine by weight ([0074]), wherein nicotine is considered to be an active constituent. As the aerosol generating material may comprise between 3-10% water ([0095]), the remainder aerosol generating agent would be the dry weight basis. The range taught by the prior art overlaps the claimed range of 0 to 60 wt.% of an active constituent.
(b) depositing one or more predetermined quantities of the slurry onto a heating element (the slurry is cast or extruded onto the electrical heating element [0021]).
(c) the slurry forming a gel ([0209]), the mixture thickened to form a gel-like consistency).
(d) drying the gel to form an amorphous solid ([0210], the dried aerosol generating material).
John does not appear to explicitly disclose (I) depositing one or more predetermined quantities of the slurry onto a carrier, wherein the carrier is at least one selected from the group consisting of paper, carbon paper, greaseproof paper, cardboard, and wood, (II) depositing the slurry onto a carrier using a pump, (III) wherein the pump is a positive displacement pump, and (IV) wherein setting the slurry comprises adding a setting agent to the slurry and wherein the total amount of setting agent added to the slurry is from 0.5-5wt% calculated on a dray weight basis.
In regard to (I), Collins, directed to an electrical smoking article and method for making, teaches:
Heaters are separated from the tobacco flavor material by a carrier which supports the tobacco flavor medium. Such carriers should preferably be able to support the tobacco flavor medium when "rolled" into a tube or other configuration, as discussed below, should preferably be thermally stable so as to be able to withstand the temperatures produced by the permanent heaters, and should preferably also be thermally transmissive to allow the heat generated by the permanent heaters to be efficiently transferred to the tobacco flavor medium. Materials which fulfill these characteristics include paper and paper-like materials. (Col. 5, lines 10-22).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify John by having a carrier such as paper separate the heater from the aerosol generating material as taught by Collins, and thus the slurry would be deposited onto the carrier consisting of paper, because both John and Collins are directed to electrical smoking articles, Collins teaches the carrier provides support to the material, and this merely involves incorporating a known element (i.e. paper carrier) to a similar smoking article to yield predictable results.
In regard to (II), White, directed to an extruded cigarette, teaches:
An extruder that comprises a slurry pump for pumping a slurry of aerosol containing substrate (Col. 11, lines 40-50). The extrudes guides the substrate onto the surface of the wrapper (i.e. carrier) (Col. 11, lines 52-65). As both John and White are directed to extrusion of slurries containing aerosol containing materials, White is considered to be analogous art.
As John is silent to how the slurry is extruded, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to look to the art for known ways of extruding slurries onto a carrier and therefore make the extrusion of the slurry onto the carrier of John to include an extruder that comprises a slurry pump to guide the slurry onto the carrier as taught by White. As both John and White are directed to extrusion of slurries containing aerosol generating materials, there is a reasonable expectation of success. The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See MPEP § 2143.02.
In regard to (III), Ewing, directed to a method for filling liquid into a cartridge for a vapor provision system, teaches:
A positive displacement pump that dispenses liquid ([0056]), the liquid may comprise nicotine, water, an aerosol former such as glycerine and propylene glycol, and additional flavors ([0003]). As both John and Ewing are directed to handling liquids that comprise aerosol generating materials, Ewing is considered to be analogous art.
The amount of liquid dispensed from the positive displacement pump is consistent and reliable ([0056]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to have the pump of modified John to be a positive displacement pump as taught by Ewing, because both John and Ewing are directed to methods of handling liquids that comprise aerosol generating materials, Ewing teaches a positive displacement pump dispenses a consistent and reliable amount of liquid, and this merely involves incorporating a known way to dispense a liquid that comprises aerosol generating materials to yield predictable results.
In regard to (IV), John further teaches suitable binders include alginate salts comprising any suitable cation such as sodium alginate or calcium alginate ([0091]), and the resulting gel formed by a combination of internal cross-linking and drying ([0208]).
Sutton, directed to preparation of an oral tobacco product, teaches:
An agent capable of forming chemical cross-linkages may comprise an alginate such as sodium alginate or other alginates ([0043]).
A cross-linking agent may be added to the agent capable of forming cross-linkages ([0058]) to form a gel ([0059]) and where the agent capable of forming chemical cross-linkages is an alginate, the cross-linking agent may be a sources of cations such as calcium ([0060]-[0061]). The cross-linking agent defines a setting agent.
When the cross-linking agent comprises a calcium salt, the amount used may comprise between about 0.01% and 5% wet weight of the total formulation ([0072]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the step of forming a gel of John by incorporating a cross-linking agent of a calcium salt between 0.01% and 5% wet weight as taught by Sutton, because both John and Sutton are directed to forming a gel for tobacco products, John teaches the binder may be sodium alginate and the gel may result from cross-linking, and Sutton teaches adding calcium ions to sodium alginates promotes cross-linking, and this merely involves merely involves incorporating a known way to form a gel through cross-linking to a similar gel composition to yield predictable results.
As the aerosol generating material may comprise between 3-10% water ([0095]), the remainder setting agent would be the dry weight basis. The range taught by the prior art overlaps the claim 1 range of from 2.5 – 5wt% and the claim 25 range of from 5 – 10wt% and is therefore prima facie obvious.
The setting agent being a calcium salt reads on the claim 8 limitation wherein the setting agent comprise calcium.
Regarding claim 5, John further teaches wherein a predetermined quantity of the slurry generates a predetermined quantity of the amorphous solid, and wherein each predetermined quantity of the slurry comprises aerosolizable components in amounts such that heating of the resulting quantity of the amorphous solid generates at least one puff of aerosol on heating ([0006]).
Regarding claim 6, John is silent to the viscosity of the slurry. However, if the composition is the same, it must have the same properties. See MPEP § 2112.01, II. Therefore, the slurry of John is considered to read on the claim limitation wherein the slurry has a viscosity of from about 10 to about 50 Pa-s at 46.5 °C.
Regarding claims 9-10, John further teaches drying a slurry comprising 25-35% water by weight ([0105]). John further teaches that some aerosol generating material may comprise between about 3-10% water ([0095]), which falls within the claim 10 range of from about 1wt% to 15wt%.
As such John teaches wherein the drying removes 60-91.4wt% of water in the slurry, which falls within the claimed range of between 50-95wt%.
Regarding claims 11-12, John further teaches wherein the depositing comprises forming a layer of the slurry on the carrier, wherein the layer has a thickness of about 0.5-5 mm [0190]. The range taught by the prior art overlaps and claim 11 range of less than about 4mm and the claim 12 range of about 1 mm to about 3 mm and is therefore prima facie obvious.
Regarding claim 14, John further teaches wherein the slurry comprises 1-25% nicotine by weight ([0074]), wherein nicotine is considered to be an active constituent. As the aerosol generating material may comprise between 3-10% water ([0095]), the remainder aerosol generating agent would be the dry weight basis. The range taught by the prior art overlaps the claimed range of 10 to 60 wt.% of an active constituent and is therefore prima facie obvious.
Regarding claim 16, John further teaches wherein the aerosol forming material is selected from erythritol, propylene glycol, glycerol and mixtures thereof ([0065]).
Regarding claim 20, John further teaches wherein the slurry comprises between about 1-90% filler ([0089]). The range taught by the prior art overlaps the claimed range of less than 20 wt.% filler and is therefore prima facie obvious.
Regarding claim 21, John does not appear to disclose the area density of the amorphous solid. However, if the composition is the same, it must have the same properties. See MPEP § 2112.01, II.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over John (US2016/0295922) in view of Collins (US 5,505,214), White (US 5,129,409), Ewing (US2018/0016040), and Sutton (US2015/0296868) as applied to claim 11 above, and further in view of Aoun (US2018/0271153).
Regarding claim 3, John does not appear to disclose depositing the predetermined quantities of slurry in a stencil so that the slurry is shaped.
However Aoun, directed to an apparatus for an aerosol generating material, teaches that during manufacturing a stencil may be used to ensure a correct placement of the aerosol generating material ([0091]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art to incorporate to John having a stencil to ensure correct placement of the aerosol-generating material as taught by Aoun, as both John and Aoun are directed to manufacturing aerosol-generating materials, Aoun teaches a stencil ensures correct place of the aerosol generating material, and this merely involves use of a known technique (i.e. stencil) to improve similar methods in the same way to yield predictable results.
Regarding claim 4, modified John further teaches removing the stencil after (b), (c), or (d) (as the resulting composite structure may be removed from the plate ([0193]), and thus modified John having a stencil would have the structure also removed from the stencil.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over John (US2016/0295922) in view of Collins (US 5,505,214), White (US 5,129,409), Ewing (US2018/0016040), and Sutton (US2015/0296868) as applied to claim 11 above, and further in view of Sugyo (US2019/0274349).
Regarding claim 13, John does not teach the thickness of the amorphous solid after drying.
However, John teaches a slurry within the claimed composition (see claim 1), a layer within the claimed thickness (see claim 11), and the same process steps such as drying (see claim 1), and therefore it follows that the prior art will obtain similar results as the claimed method, specifically the same resulting thickness in comparison to the thickness of the layer before drying, that being between about 5% and 20% of the thickness of the layer, absent evidence to the contrary.
Alternatively, Sugyo, directed to a sheet for a smoking article, teaches:
A raw material slurry that is dried to obtain a thickness of about 0.05 to 0.15 mm ([0068]).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the thickness of the amorphous solid of John after drying be 0.05 to 0.15 mm as taught by Sugyo. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP § 2144.07.
This would result in wherein the drying results in an amorphous solid which has a thickness that is between 1% and 30% of the thickness of the layer. The range taught by the prior art overlaps the claimed range of between 5% and 20% and is therefore prima facie obvious.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over John (US2016/0295922) in view of Collins (US 5,505,214), White (US 5,129,409), Ewing (US2018/0016040), and Sutton (US2015/0296868) as applied to claim 1 above, and further in view of Kobal (US2015/0296868) and as evidenced by Chemical Book (cited previously).
Regarding claim 22, modified John teaches that the setting agent may be a calcium salt (Sutton, [0062]).
Kobal, directed to smokeless tobacco products, teaches suitable cross-linking agents which are calcium salts include calcium lactate, calcium carbonate, calcium citrate, etc. ([0051]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to one having ordinary skill in the art to make the calcium salt cross-linking agent of modified John be calcium lactate as taught by Kobal because the selection of a known material based on its suitability for its intended use supports prima facie obviousness.
As evidenced by Chemical Book, calcium lactate has a solubility in water of 3.4g/100g of water at 20 C (see Section Chemical Lactate Chemical Properties, Uses, Production and subsections Uses). As such, solubility of the calcium lactate is considered to be 3.4g/100g of water which falls within the claimed range of
greater than or equal to about 1 g/100mL at 20 0C.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over John (US2016/0295922) in view of Collins (US 5,505,214), White (US 5,129,409), Ewing (US2018/0016040), and Sutton (US2015/0296868) as applied to claim 1 above, and further in view of Gedevanishvili (US2007/0246054).
Regarding claim 23, modified John further teaches wherein the setting agent is provided in an aqueous solution (Sutton, cross-linking agent is soluble in aqueous solution, [0097]).
Modified John is silent to the calcium concentration in the aqueous solution.
However, Gedevanishvili, directed to smoking articles, teaches that adjusting the concentration of calcium ions, which causes cross-linking, controls gel strength ([0029]).
As such, Gedevanishvili is reasonably considered to teach that gel strength can be controlled by the concentration of calcium ions in the aqueous solution. Therein, the calcium concentration in the aqueous solution is considered to be a result effective variable with affects the gel strength.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to determine an optimum or workable range of calcium concentration in the aqueous solution through routine experimentation and arrive at the claimed range or ranges overlapping the claimed range as one of ordinary skill would know to optimize the gel strength based on the calcium concentration, Gedevanishvili teaches the gel strength can be controlled by modifying the calcium concentration in the aqueous solution, and it has been held that discovering an optimum or workable range of a result effective variable involves only routine skill in the art. The burden shifts to the Applicant to demonstrate that the claimed concentration is critical and has unexpected results.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over John (US2016/0295922) in view of Collins (US 5,505,214), White (US 5,129,409), Ewing (US2018/0016040), and Sutton (US2015/0296868) as applied to claim 1 above, and further in view of John 2007 (US2007/0062550).
Regarding claim 24, John does not teach wherein the setting agent is applied to the slurry by spraying.
However, John 2007, directed to smoking articles, teaches addition of a cross-linking agent such as a solution of calcium ions that may be applied to a material by spraying ([0087]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify John by incorporating spraying the solution of calcium ions as taught by John 2007, and thus the setting agent is applied to the solution by spraying, because both modified John and John 2007 are directed to applying calcium ions to a material to facilitate cross-linking, and this merely involves applying a known technique (i.e. spraying) of adding a solution of calcium ions to a similar method that involves adding a solution of calcium ions to yield predictable results.
Conclusion
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/N.A.S./Examiner, Art Unit 1755
/ERIC YAARY/Examiner, Art Unit 1755
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