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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/7/2026 has been entered.
Response to Amendment
Claims 1 and 22 are amended. Claims 11, 16, 21 and 23-24 are cancelled. Claims 15, 17 and 26 are withdrawn. Claims 1-10, 12-14, 18-20, 22 and 25 are presently examined.
Specification
The use of the term Drambuie (page 47, line 5), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-10, 12-14, 18-20, 22 and 25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites the limitation “a carrier formed of paper, carbon paper, greaseproof paper, carbon allotropes, plastic, cardboard, wood, or combinations thereof is provided and the slurry is shaped as a planar sheet on the carrier.” However, the claimed method is a method of making an amorphous solid, not a carrier. It is therefore unclear whether and to what extent the limitations regarding the structure of the carrier limit the claimed method. For the purposes of this Office action, the limitation will be interpreted as if it required any carrier on which a planar amorphous solid can be formed. Claims 2-10, 12-14, 18-20, 22 and 25 are indefinite by dependence.
Regarding claim 25, the claim recites the limitation “the carrier is paper-backed foil.” However, the claimed method is a method of making an amorphous solid, not a carrier. It is therefore unclear whether and to what extent the limitations regarding the structure of the carrier limit the claimed method. For the purposes of this Office action, the limitation will be interpreted as if it did not limit claim 1.
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.
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 1-10, 12-14, 18 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over John (US 2018/0271153) in view of King, Jr. (US 4,306,358) and Han (US 12,268,235).
Regarding claims 1, 9-10, 12-14 and 22, John discloses an aerosol generating material (abstract) that is relatively dry so that an aerosol is generated at a comfortable temperature for a user and energy consumption is reduced [0138]. The composition is made by placing wet aerosol generating material (figure 14, reference numeral 60) in recesses (figure 14, reference numeral 57a) of a receptacle ([0122], figure 14, reference numeral 57), which is considered to meet the claim limitation of a carrier. The specific material of the carrier is not relevant to patentability since the claim is directed to a method of making an amorphous solid and the carrier is not, on its own, a component of the amorphous solid. It is evident that the material is shaped when placed in the recesses since the recesses have a shape (figure 14). The material is considered to be set after being placed in the recesses since it remains set inside the recesses. The composition is then actively dried so that water is present only in a relatively small amount [0130] so that it forms a dried gel [0132]. This dried gel is considered to be an amorphous solid since applicant’s specification discloses that drying a gel produces an amorphous solid (page 9, lines 14-22). The material has a composition on a dry weight basis [0124] of 1-30 wt% alginate [0127], which is considered to meet the claim limitation of a gelling agent, 10-60 wt% glycerol [0126], which is considered to meet the claim limitation of an aerosol forming material, and 0-50 wt% of a tobacco extract [0129], which is considered to meet the claim limitation of an active constituent. John does not explicitly disclose (a) a temperature of the drying process, (b) a time of the drying process, and (c) the recesses having a planar shape.
Regarding (a), King, Jr. teaches an apparatus for drying a slurry (abstract) of reconstituted tobacco to remove moisture in a rapid and uniform manner (column 1, lines 6-12). The slurry is exposed to a stream atmosphere that heats the slurry to a temperature of 200 °F (column 6, lines 60-68, column 7, lines 1-6).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the drying apparatus and operating parameters of King, Jr. to dry the slurry of modified John. One would have been motivated to do so since King, Jr. teaches an apparatus that dries a tobacco slurry in a rapid and uniform manner.
Regarding (b), Han teaches a process for manufacturing a reconstituted tobacco sheet in which the sheet is dried for about 5 minutes at a temperature over 100 °C (column 15, lines 40-51) based on a measured moisture content (column 4, lines 10-14) so that a specific moisture content is achieved (column 16, lines 57-64).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the drying of modified John for the time of Han. One would have been motivated to do so since Han teaches a suitable time for heating a tobacco material to achieve a desired moisture content.
Regarding (c), it would have been obvious to one of ordinary skill in the art to shape the recesses such that they are planar recesses that contain planar material. The change in form or shape, without any new or unexpected results, is an obvious engineering design. See MPEP § 2144.04 IV B.
Regarding claim 2, modified John teaches all the claim limitations as set forth above. John additionally discloses that the drying reduces the weight of water from around 40 to 90% of the composition to around 5 to 40% [0131]. Modified John does not explicitly teach the amount of water removed during the drying being within the claimed range.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manipulate the starting and final water weights so that the percent change fall within the claimed range. 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).
Regarding claim 3, modified John teaches all the claim limitations as set forth above. John additionally teaches that water is present in the composition at around 5 to 40 wt% after drying [0131]. Modified John does not explicitly teach the weight of water in the composition range being obvious.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the claimed range is obvious. 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).
Regarding claims 4 and 5, modified John teaches all the claim limitations as set forth above. John additionally discloses that the aerosol forming substrate forms a layer in the recesses (figure 14). Modified John does not explicitly teach a thickness of the layer.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the layer have the claimed thickness. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 6, modified John teaches all the claim limitations as set forth above. John additionally discloses that the aerosol forming substrate forms a layer in the recesses both before and after drying (figure 14). Modified John does not explicitly teach a percentage by which the layer shrinks during drying.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the layer shrink by the claimed percentage. A change in size is generally recognized as being within the level of one of ordinary skill in the art absent evidence that the change in size results in a difference in performance. See MPEP § 2144.04 IV A.
Regarding claim 7, King, Jr. teaches that the steam is heated to 215 °F to 218 °F (column 6, lines 60-68, column 7, lines 1-6).
Regarding claim 8, King, Jr. teaches that the drying air is supplied at a velocity of about 3,400 ft./min. (column 7, lines 6-20).
Regarding claim 18, John discloses that the composition may or may not contain a filler [0033]. It is therefore evident that the composition of modified John need not contain a filler, which is considered to meet the claim limitation of less than 20 wt%.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over John (US 2018/0271153) in view of King, Jr. (US 4,306,358) and Han (US 12,268,235) as applied to claim 1 above, and further in view of Capelli (US 12,011,028).
Regarding claim 19, modified John teaches all the claim limitations as set forth above. Modified John does not explicitly teach a basis weight of the amorphous solid.
Capelli teaches an aerosol generating article comprising a layer of aerosol generating film applied to a carrier (abstract). The film has a basis weight of at least about 100 grams per square meter to about no more than 260 grams per square meter (column 8, lines 43-56).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the amorphous solid of modified John with the basis weight of Capelli. One would have been motivated to do so since Capelli teaches a suitable basis weight for an aerosol generating material held on a carrier.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over John (US 2018/0271153) in view of King, Jr. (US 4,306,358) and Han (US 12,268,235) as applied to claim 1 above, and further in view of Grollimund (US 4,585,016) and Keritsis (US 4,506,684).
Regarding claim 20, modified John teaches all the claim limitations as set forth above. Modified John not explicitly disclose (a) applying a setting agent onto the slurry and (b) spraying the setting agent.
Regarding (a), Grollimund teaches a web that is formed into a specific shaped and retained in that shape by a setting agent (column 4, lines 32-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the amorphous solid of modified John with the setting agent of Grollimund. One would have been motivated to do so since Grollimund teaches a setting agent that retains a flexible structure in a desired shape.
Regarding (b), Keritsis teaches a process for producing a synthetic smoking material (abstract) that is sprayed with a coating of polymeric material that stabilizes the smoking product (column 18, lines 63-68, column 19, lines 1-9).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the setting agent of modified John using the spraying of Keritsis. One would have been motivated to do so since Keritsis teaches that spraying is a suitable method to apply a stabilizing coating to a smoking material.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Mua (US 7,428,905) in view of Wrenn (US 7,946,296) and Phil (US 2,971,517).
Regarding claim 25, Mua discloses a method of making a smoking article including a sheet produced via a papermaking process (column 2, lines 38-63). The process includes mixing a tobacco slurry with wood pulp such that the tobacco material makes up from about 10-20% dry weight of the finished sheet (column 3, lines 54-67, column 4, lines 1-9), which is considered to meet the claim limitation of an active constituent. An alginate binder solution is added such that the finished sheet contains 5-25% dry weight binder on a dry weight basis (column 4, lines 12-24), which is considered to meet the claim limitation of a gelling agent since applicant’s specification discloses that alginate is a gelling agent (page 8, lines 3-7). A glycerol humectant is also added such that the finished sheet contains about 8-15% dry weight humectant (column 4, lines 12-24), which is considered to meet the claim limitation of an aerosol forming material. The sheet is formed by a bandcasting process and then shredded (column 4, lines 12-24). The sheet is considered to form a gel and an amorphous solid since it contains the claimed amount of gelling agent. Mua does not explicitly disclose (a) a drying time and (b) a surface.
Regarding (a), Wrenn teaches a tobacco film strip containing tobacco, a binder, and a humectant (abstract) that is formed by casting and then drying the film (column 1, lines 22-28). The drying occurs in an hour or less when the film is heated (column 5, lines 51-62).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to dry the tobacco sheet of Mua for the time of Wrenn. One would have been motivated to do so since Wrenn teaches a suitable time for heating a tobacco film to dry it. 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).
Regarding (b), Phil teaches a process for the preparation a tobacco sheet comprising tobacco mixed with a binder (column 2, lines 21-28) in which a slurry is spread onto a platen, which is considered to meet the claim limitation of shaping and setting to form a gel on a planar sheet, and then dried at 80 °C (column 2, lines 61-72). The specific material of the platen is not relevant to patentability since the claim is directed to a method of making an amorphous solid and the platen is not, on its own, a component of the amorphous solid.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the process of Phil to form the tobacco sheet of Mua. One would have been motivated to do so since Phil teaches a suitable method for the preparation of a tobacco sheet.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-8, 12-14 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,569,002 (hereafter referred to as Abi Aoun) in view of King, Jr. (US 4,306,358).
Regarding claims 1 and 22, Abi Aoun claims a method of making an amorphous solid comprising forming a slurry comprising 0.5-60 wt% of a gelling agent, 5-80 wt% of an aerosol forming material, and 0-60 wt% of an active constituent, wherein these weights are calculated on a dry weight basis, shaping the slurry, setting the slurry to form a gel, and drying the gel to form an amorphous sold (claim 1), wherein the slurry is shaped on a carrier (claim 12). The drying comprises flowing air over the gel for a period of less than 60 minutes (claim 4). The amorphous solid is formed into a layer (claim 9), which is considered to meet the claim limitation of a planar sheet. The specific material of the carrier is not relevant to patentability since the claim is directed to a method of making an amorphous solid and the carrier is not, on its own, a component of the amorphous solid. Abi Aoun does not explicitly claim the temperature to which the gel is heated during the drying.
King, Jr. teaches an apparatus for drying a slurry (abstract) of reconstituted tobacco to remove moisture in a rapid and uniform manner (column 1, lines 6-12). The slurry is exposed to a stream atmosphere that heats the slurry to a temperature of 200 °F (column 6, lines 60-68, column 7, lines 1-6).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the drying apparatus and operating parameters of King, Jr. to dry the slurry of Abi Aoun. One would have been motivated to do so since King, Jr. teaches an apparatus that dries a tobacco slurry in a rapid and uniform manner.
Regarding claim 3, Abi Aoun claims the resulting amorphous sold comprising from about 1 wt% to about 15 wt% water, calculated on a wet weight basis (claim 8).
Regarding claim 4, Abi Aoun claims the shaping comprising forming a layer of layer having a thickness of less than about 4 mm (claim 9).
Regarding claim 5, Abi Aoun claims the thickness of the layer being in the range of about 1 mm to about 3 mm (claim 10).
Regarding claim 6, Abi Aoun claims the drying resulting in the amorphous solid having a thickness that is between about 5% and about 20% of the thickness of the layer (claim 11).
Regarding claim 7, Abi Aoun claims the drying including flowing air having a temperature between about 80 °C and about 140 °C (claim 4).
Regarding claim 8, King, Jr. teaches that the drying air is supplied at a velocity of about 3,400 ft./min. (column 7, lines 6-20).
Regarding claim 12, Abi Aoun claims the slurry comprising 10-60 wt% of the active constituent (claim 180.
Regarding claim 13, Abi Aoun claims the gelling agent being a pectin (claim 14).
Regarding claim 14, Abi Aoun claims the aerosol forming material being erythritol (claim 15).
Claims 1-7, 12-14, 18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-20 of copending Application No. 17/780,243 (hereafter referred to as Leah).
Regarding claims 1, 7 and 22, Leah claims a method of making an amorphous solid comprising forming a slurry comprising 0.5-60 wt% of a gelling agent, 5-80 wt% of an aerosol forming material, and 0-60 wt% of an active constituent, wherein these weights are calculated on a dry weight basis, shaping the slurry, setting the slurry to form a gel, and drying the gel to form an amorphous solid (claim 1), wherein the drying comprises heating the gel to a temperature in the range of about 80 °c to about 140 °C for a period of less than 60 minutes (claim 9) and flowing air over the gel (claim 10). The shaping occurs on a carrier (claim 17). The slurry is formed into a layer (claim 7), which is considered to meet the claim limitation of a planar sheet. The specific material of the carrier is not relevant to patentability since the claim is directed to a method of making an amorphous solid and the carrier is not, on its own, a component of the amorphous solid.
Regarding claim 2, Leah claims the drying removing 50-95 wt% of water in the slurry on a wet weight basis (claim 12).
Regarding claim 3, Leah claims the resulting amorphous solid comprising from about 1 wt% to about 15 wt% water, calculated on a wet weight basis (claim 13).
Regarding claims 4 and 5, Leah claims the thickness of the layer being in a range of about 1 mm to about 3 mm (claim 15).
Regarding claim 6, Leah claims the drying resulting in an amorphous solid which has a thickness that is between about 5% and 20% of the thickness of the layer (claim 16).
Regarding claim 12, Leah claims the slurry comprising 10-60 wt% of the active constituent (claim 17).
Regarding claim 13, Leah claims the gelling agent being a pectin (claim 19).
Regarding claim 14, Leah claims the aerosol forming material being glycerol (claim 20).
Regarding claim 18, Leah is silent as to a filler, and is therefore considered to have no filler, which falls within the claimed range.
Regarding claim 20, Leah claims the setting agent being applied to a surface of the slurry after the slurry is shaped (claim 1) by spraying (claim 3).
Claims 8 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-20 of copending Application No. 17/780,243 (hereafter referred to as Leah) in view of King, Jr. (US 4,306,358).
Regarding claim 8, Leah claims all the claim limitations as set forth above. Leah does not explicitly claim an air flow speed during drying.
King, Jr. teaches an apparatus for drying a slurry (abstract) of reconstituted tobacco to remove moisture in a rapid and uniform manner (column 1, lines 6-12). King, Jr. teaches that the drying air is supplied at a velocity of about 3,400 ft./min. (column 7, lines 6-20).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the drying apparatus and operating parameters of King, Jr. to dry the slurry of Leah. One would have been motivated to do so since King, Jr. teaches an apparatus that dries a tobacco slurry in a rapid and uniform manner.
Regarding claim 10, Leah claims all the claim limitations as set forth above. Leah does not explicitly claim the gel being heated to a temperature within the claimed range.
King, Jr. teaches an apparatus for drying a slurry (abstract) of reconstituted tobacco to remove moisture in a rapid and uniform manner (column 1, lines 6-12). The slurry is exposed to a stream atmosphere that heats the slurry to a temperature of 200 °F (column 6, lines 60-68, column 7, lines 1-6).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the drying apparatus and operating parameters of King, Jr. to dry the slurry of Leah. One would have been motivated to do so since King, Jr. teaches an apparatus that dries a tobacco slurry in a rapid and uniform manner.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-20 of copending Application No. 17/780,243 (hereafter referred to as Leah) in view of Han (US 12,268,235).
Regarding claim 9, Leah claims all the claim limitations as set forth above. Leah does not explicitly claim the drying occurring within the claimed timeframe.
Han teaches a process for manufacturing a reconstituted tobacco sheet in which the sheet is dried for about 5 minutes at a temperature over 100 °C (column 15, lines 40-51) based on a measured moisture content (column 4, lines 10-14) so that a specific moisture content is achieved (column 16, lines 57-64).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the drying of Leah for the time of Han. One would have been motivated to do so since Han teaches a suitable time for heating a tobacco material to achieve a desired moisture content.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-20 of copending Application No. 17/780,243 (hereafter referred to as Leah) in view of Capelli (US 12,011,028).
Regarding claim 19, Leah claims all the claim limitations as set forth above. Leah does not explicitly claim a basis weight of the amorphous solid.
Capelli teaches an aerosol generating article comprising a layer of aerosol generating film applied to a carrier (abstract). The film has a basis weight of at least about 100 grams per square meter to about no more than 260 grams per square meter (column 8, lines 43-56).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the amorphous solid of Leah with the basis weight of Capelli. One would have been motivated to do so since Capelli teaches a suitable basis weight for an aerosol generating material held on a carrier.
Claim 25 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-20 of copending Application No. 17/780,243 (hereafter referred to as Leah) in view of Jurgensen (US 2,734,509).
Regarding claim 25, Leah claims all the claim limitations as set forth above. Leah does not explicitly claim shredding the sheet following dyring.
Jurgensen teaches that tobacco sheets are shredded into a size suitable for formation into cigarettes (column 6, lines 27-35).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to shred the sheet of Leah. One would have been motivated to do so since Jurgensen teaches shredding a tobacco sheet to form a cigarette.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the cited references do not a carrier made from the claimed materials, (b) that the cited references do not disclose teach applicant’s planar carrier, (c) that the claimed invention does not have a step of forming recesses in a carrier, (d) that providing planar recesses in John would not have been obvious since the heating elements of John match the recesses, (e) that the cited references do not teach shredding, and (f) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the specific material of the carrier is not relevant to patentability since the claim is directed to a method of making an amorphous solid and the carrier is not, on its own, a component of the amorphous solid. The carrier could be made of any arbitrary material and the claimed method of making the amorphous solid would be performed in the exact same manner. It is noted, however, that amorphous solid must be planar, and therefore requires a carrier that allows the formation of a planar amorphous solid. However, any features of the carrier beyond that are not part of the claimed process at all.
Regarding (b), the claims do not require a planar, but rather a carrier that allows the formation of a planar amorphous solid, which need not cover the entire carrier. This is met by the planar portions of modified John allowing the formation of planar aerosol forming substrate portions. A single planar portion of aerosol forming substrate, by itself, is considered to be the claimed “the amorphous solid.”
Regarding (c), the fact that this feature is neither claimed or disclosed by applicant is irrelevant to patentability since the features of the carrier itself are only tangentially related to the claimed method, which is directed to forming an amorphous solid. Furthermore the open language of “comprising” used in the claim does not preclude the prior art from including additional features that are not part of applicant’s invention.
Regarding (d), John discloses that the heating elements are aligned with the recesses but are also linear ([0070], figure 2, reference numeral 11a). However, changing the shape of the recess would actually improve, rather than hurt, the performance of John, since the linear heaters would then match the shape of the modified recesses, which John discloses is beneficial [0070]. However, John clearly indicates (a) that one ordinary skill in the art is capable of modifying the heaters to match the shape of the recesses if desired and (b) that this matching is not in any event critical to the function of John. Therefore modifications of the shape of the recesses of John would not have resulted in reduced performance, and John therefore does not suggest against such modifications.
Regarding (e), applicant does not address that the sheet of Mua formed by the bandcasting process is then shredded (column 4, lines 12-24), which is relied upon as set forth above.
Regarding (f), all examined claims, including the examined independent claim, are rejected as set forth above.
Regarding the double patenting rejections, applicant’s arguments have been fully considered but they are not persuasive since, as set forth above, the claimed method does actually include the composition of the carrier since the carrier is not part of the amorphous solid being formed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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