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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/26/2025 has been entered.
Status of the Claims
Claims 1, 3-17 and 19-21 are pending and are subject to this Office Action. Claims 17 and 19 have been withdrawn. Claim 2 has been cancelled. Claim 1 has been amended.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 8/26/2025 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 6-10, filed 8/26/2025, 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 to include the new limitation wherein the carrier is at least one selected from the group consisting of paper, carbon paper, greaseproof paper, cardboard, and wood, whereas previously this was not required. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously found art and newly found art.
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, 3-12, 14-16, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (US2018/0279666) in view of Collins (US 5,505,214), White (US 5,129,409), and Ewing (US2018/0016040).
Regarding claims 1 and 14, Aoun teaches:
A method of making an amorphous solid (aerosol generating material) comprising: (a) forming a slurry (the aerosol generating material is made from a slurry comprising the components of the aerosol generating material and water, [0081]) comprising:
2.5-10 wt.% binder such as an alginate [0049]. The applicant teaches that alginate is a gelling agent (see page 13, first paragraph of the specification) and therefore alginate reads on the claimed gelling agent.
10-35 wt.% of an aerosol forming material ([0021], aerosol forming agent).
5-35 wt.% of an active constituent and/or flavorant ([0021], tobacco extract).
Wherein these weights are calculated on a dry weight basis ([0009]).
The slurry may be cast onto an electrically resistive heating element [0094].
(c) setting the predetermined quantities of the slurry to form a gel (As the binder increases the viscosity of the slurry to allow it to be cast and retain the desired shape [0052], the step of the viscosity of the slurry increasing reads on setting the slurry to form a gel).
(d) drying the gel to form an amorphous solid ([0090]).
The prior art’s ranges of 2.5-10 wt.% of a gelling agent, 10-35 wt.% of an aerosol forming material, and 5-35 wt.% of an active constituent and/or flavorant lie within the claimed range and therefore the prior art anticipates the claim.
The prior art’s range of 5-35 wt.% of an active constituent and/or flavorant overlaps the claimed range of 10-60 wt.% as recited in claim 14 as is therefore considered to be prima facie obvious.
Aoun further teaches that the slurry may be extruded or cast ([0081]). Aoun does not appear to 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, and (III) wherein the pump is a positive displacement pump.
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 Aoun 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 Aoun 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 extruder guides the substrate onto the surface of the wrapper (i.e. carrier) (Col. 11, lines 52-65). As both Aoun and White are directed to extrusion of slurries containing aerosol containing materials, White is considered to be analogous art.
As Aoun 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 Aoun to include an extruder that comprises a slurry pump to guide the slurry onto the carrier as taught by White. As both Aoun 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 Aoun 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 Aoun be a positive displacement pump as taught by Ewing, because both Aoun 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 predicable results.
Regarding claim 3, Aoun further teaches:
The slurry may be shaped by casting or extruding ([0090]).
Aoun does not appear to disclose depositing the predetermined quantities of slurry in a stencil so that the slurry is shaped.
White further teaches:
Wherein the means for depositing a slurry of aerosol containing substrate comprises a die to form the slurry into the desired shape (Col. 11, lines 35-50). The die is considered to read on a stencil.
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 depositing of the slurry onto a carrier of Aoun by incorporating a die as taught by White, because both Aoun and White are directed to depositing slurries of aerosol containing materials onto a carrier, White teaches the die allows the slurry to form into a desired shape, and this merely involves incorporating a known slurry depositing element (i.e. die) to a similar slurry depositing process to yield predicable results.
Regarding claim 4, modified Aoun does not appear to explicitly disclose removing the stencil after (b), (c), or (d). However, Aoun further teaches that after drying the cast sheet may be removed from the casting plate by any suitable method ([0091]). Therefore, removing the cast sheet from the casting plate of modified Aoun would also include the cast sheet being removed from the stencil, therefore reading on removing the stencil after drying or step (d).
Regarding claim 5, Aoun 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 (the aerosol generating material may be heated to produce sufficient aerosol and/or gas to allow multiple puffs [0077]).
Regarding claim 6, Aoun 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 Aoun 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 7-8, Aoun further teaches that the binder increases the viscosity of the slurry to allow it to be cast and retain the desired shape ([0052]), and that the binder may be calcium alginate ([0013]), which the applicant’s specification teaches is known to be a gelling agent combined with a setting agent (page 14, first paragraph). Therefore, the binder being calcium alginate is considered to read on wherein setting the slurry comprises adding a setting agent to the slurry as recited in claim 7 and wherein the setting agent comprises calcium as recited in claim 8.
Regarding claim 9, Aoun further teaches:
A slurry formed containing 756 g water ([0104]), which equates to 74.54 wt.% of the slurry.
After drying, the resulting aerosol generating material has 6.3% water (Table 2, [0106]-[0107]), which equates to removing 91.55% of water in the slurry, and lies within the claimed range of 50-95 wt.%.
Regarding claim 10, Aoun further teaches:
Wherein the resulting amorphous solid comprises from about 1wt% to about 15wt% water, calculated on a wet weight basis ([0058]).
Regarding claims 11-12, Aoun further teaches:
Wherein the depositing comprises forming a layer of the slurry on the carrier, wherein the layer has a thickness of about 2 mm ([0089]), which lies within the claimed range of less than about 4 mm as recited in claim 11, and in the range of about 1 mm to 3 mm as recited in claim 12.
Regarding claim 15, Aoun further teaches:
Wherein the gelling agent comprises alginates ([0013]).
Regarding claim 16, Aoun further teaches:
Wherein the aerosol forming material is propylene glycol or glycerol ([0012]).
Regarding claim 21, Aoun 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) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (US2018/0279666) in view of Collins (US 5,505,214), White (US 5,129,409), and Ewing (US2018/0016040) as applied to claim 11 above, and further in view of Sugyo (US2019/0274349).
Regarding claim 13, Aoun does not teach the thickness of the amorphous solid after drying.
However, Aoun 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 Aoun 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 2.5% and 7.5% of the thickness of the layer. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Claim(s) 1 and 20 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) and Ewing (US2018/0016040).
Regarding claim 1, 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. 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) setting the predetermined quantities of the slurry to form 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, and (III) wherein the pump is a positive displacement pump.
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 predicable results.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755