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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
Consideration of Declaration Under 37 C.F.R. § 1.132
Applicant’s Declaration under 37 C.F.R. § 1.132 by Walid Abi Aoun has been considered and is acknowledged. However, for the reasons set forth below, the Declaration is not persuasive and does not overcome the prima facie case of obviousness. The Declaration provides generalized technical explanation and conclusory statements, but fails to establish unexpected results, criticality, or non-obviousness commensurate in scope with the claims for the reasons explained below, and does not rebut the Examiner’s findings regarding the teachings and disclosures of the applied prior art or the articulated rationale to combine.
Applicant’s argument that the prior art does not teach or suggest the claimed absolute water content (<15 mg) is not persuasive
Applicant argues that John teaches only relative water concentration (e.g., weight percentage) and does not teach absolute water content in milligrams, and that any conversion from weight percentage to an absolute amount is based on an improper assumption and therefore does not constitute a teaching or suggestion in the prior art. This argument is not persuasive.
The rejection does not rely on speculation or hindsight reconstruction, but rather on the combined teachings of the applied references, which collectively provide both (i) water concentration information (John) and (ii) portion/aliquot mass context (Harrison). One of ordinary skill in the art would have readily understood how to determine an absolute water amount for a given portion mass using routine arithmetic. The applied references are not required to express parameters using the same units as the claims so long as the claimed limitation is reasonably conveyed to one of ordinary skill in the art.
John teaches water content as a relative concentration within the aerosol-generating material, while Harrison discloses discrete portion sizes (aliquots) of material. When John’s disclosed water concentration is applied to the portion masses taught by Harrison, the resulting absolute water amounts overlap the claimed limitation of less than 15 mg. Applicant’s argument is directed to the form of expression of the parameter, not to any substantive deficiency in the teachings of the applied references.
Applicant’s assertion that the Examiner improperly assumed a “100 mg total mass” is also not persuasive. Harrison expressly discloses a range of portion/aliquot masses (e.g., 10–100 mg). The rejection does not depend on a single assumed mass value, but rather on the fact that Harrison provides an explicit mass range from which a skilled artisan would reasonably select, and when combined with John’s taught water concentrations, yields absolute water contents that overlap the claimed range. Applicant has not shown that selecting a portion mass within Harrison’s disclosed range would have been outside the level of ordinary skill in the art or contrary to the teachings of the prior art.
Applicant further argues that Harrison’s disclosure of aliquot size relates only to total mass and does not teach limiting absolute water content. This argument is not persuasive because Harrison is not relied upon to independently teach the claimed water limitation. Instead, Harrison supplies the portion mass context, while John teaches the water concentration. The claimed absolute water content is a function of these two parameters. The combination of John and Harrison therefore renders obvious selecting a portion size and composition such that the resulting absolute water amount falls below the claimed threshold.
Applicant’s argument that the Declaration establishes unexpected results or technical significance of the <15 mg water limitation is not persuasive
Applicant argues that the Declaration provides technical evidence demonstrating unexpected results by explaining that water volatilizes before active components, contributes to “hot puff,” and that limiting absolute water content to less than 15 mg avoids or substantially reduces hot puff.
The Declaration is not persuasive because it provides generalized technical explanation rather than objective comparative evidence. The Declaration does not include experimental data or comparative testing showing that the claimed limitation produces a result that is unexpected relative to the closest prior art embodiments falling within the scope of John and Harrison. In particular, the Declaration does not demonstrate that compositions or portions within the ranges taught by the applied references fail to achieve acceptable aerosol performance while compositions meeting the claimed <15 mg limitation achieve a result that is different in kind rather than degree.
The Declaration’s explanation that reducing water content reduces steam formation describes predictable physical behavior. As acknowledged in the Declaration itself, water content directly affects aerosol characteristics. Such statements confirm that water content is a result-effective variable, and optimizing that variable to achieve a desired outcome represents routine optimization within the level of ordinary skill in the art.
Additionally, the Declaration’s comparison between “approximately 40 mg or more” of water and less than 15 mg does not establish that the claimed threshold represents a critical value. Applicant has not shown that 15 mg constitutes a point of unexpected discontinuity, nor has applicant demonstrated that similar benefits would not be achieved at values slightly above the claimed limit. Absent a showing of criticality, the Declaration does not rebut the prima facie case of obviousness.
Further, the Declaration does not demonstrate that the alleged benefits occur across the full scope of the claims, which encompass broad system configurations and operating conditions. Accordingly, the Declaration is not commensurate in scope with the claims.
Applicant’s argument that Choi’s liquid-system heating durations are not applicable to John’s solid aerosol-generating system is not persuasive
Applicant argues that heating durations taught by Choi for liquid aerosol-generating systems are not applicable to John’s solid aerosol-generating system due to alleged fundamental differences between liquid and solid systems. This argument is not persuasive.
Choi discloses heating durations in the context of aerosol generation, and John teaches a system for generating aerosol using a heater and aerosol-generating material. Heating duration is a known and controllable operating parameter relevant to aerosol generation in both contexts. The rejection does not require converting John’s system from solid to liquid, but instead relies on Choi for its disclosure of heating duration ranges that would reasonably be considered by one of ordinary skill in the art when controlling thermal conditions during aerosol generation.
Applicant has not shown that applying Choi’s heating durations to John’s system would render the system inoperable, defeat its intended purpose, or be contrary to John’s teachings. Differences in system architecture alone do not preclude a skilled artisan from applying known operating parameters when addressing similar thermal and aerosol-generation considerations. Accordingly, Choi remains properly applied.
Applicant’s argument that the rejection lacks a proper motivation to combine and relies on hindsight is not persuasive
Applicant contends that the rejection relies on hindsight reconstruction and that the prior art provides no teaching or suggestion to convert relative water percentages to absolute amounts, recognize that limiting water to less than 15 mg avoids hot puff, or apply heating parameters from liquid systems to solid systems. This argument is not persuasive.
Examiner has provided a reasoned rationale grounded in the applied references and the knowledge of one of ordinary skill in the art. Converting between concentration and absolute amount given a known portion mass is a routine calculation. Adjusting water content to achieve desired aerosol characteristics is a predictable optimization of a known, result-effective variable. Applying known heating-duration parameters from aerosol-generating systems addressing similar thermal considerations is likewise within the ordinary skill in the art. The rejection therefore does not rely on hindsight, but on the predictable use of known techniques to achieve expected results.
For the reasons discussed above, including consideration of the Declaration under 37 C.F.R. § 1.132, applicant’s arguments are not persuasive, and the rejection under 35 U.S.C. § 103 is maintained.
Election/Restrictions
Claims 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/28/2024.
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.
Claim(s) 1-7, 9-15, 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over John et al. (US20180271153), and further in view of Harrison et al. (US 2021/0030977) and Choi (US 2014/0334804).
Regarding claim 1, 6-7, 9-10 and 17-18, John teaches an aerosol provision system (apparatus 1) for generating aerosol from an aerosol generating material, the system comprising:
and one or more aerosol generating components (heating arrangement 11);
control circuitry 15 configured to supply power to the one or more aerosol generating components (The battery 17 is electrically coupled to the heater arrangement 11 (to be discussed further below) of the heating chamber 5 to supply electrical power when required and under control of the electrical control circuitry 15 to heat the aerosol generating material 9 [0037]),
aerosol generating agent in an amount of from about 5wt% to 80wt% (Glycerol 10 - 60 % [0126])
and gelling agent in an amount of from about 1 wt% to 60wt% (Alginate 1-30 % [0127]),
Regarding the limitation of “wherein these weights are calculated on a dry weight basis, and less than 15 mg water”, assuming a 100 mg of total material that would equal a wt % of less than 15% of water.
John teaches an end percentage per weight of water of around 5 to 40% weight which overlaps with the claimed water ranges. ¶[0131].
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to select the water range of John in practicing the invention of John teaches this range. ¶[0131]. The 5 to 40% water range overlaps the claimed range and It has been held that overlapping ranges are prima facie evidence of obviousness (See MPEP § 2144.05I).
John further teaches the dry aerosol generating material 9 may for example comprise a dried gel reading on the limitation of a solid aerosol generating material but is silent to the mass no greater than 20mg.
However Harrison discloses a system for vaporization of a plant-derived concentrates (abstract) wherein the mass of the material in each aliquot is in the range of about 0.01grams to about 0.1grams [0024] which overlaps in the mass ranges of the claimed invention. Harrison further discloses different amounts and types of concentrates…allows distinct advantages over prior art vaporization systems, by, e.g., enabling the user to " customize” his or her vaporization regimen [0024].
Therefore it would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to have modified the system of John in view of Harrison to have a mass material less than 20mg to correspond with that of the claimed for the benefit of a user customizable vaporization regimen.
John teaches that the activation of the heating element 11 can result in a flash vaporization of the aerosol generating material wherein the temperature is controlled to reach any temperature between 180 to 250 C which anticipates the heating temperature ranges of claim 1, 6 and 10 but is silent to duration of the heating.
However Choi discloses an atomizing device for generating heat to atomize a source material for a duration of 0.5 seconds to about 2 seconds in which evaporation or sublimation occurs which overlaps with the claimed duration.
Therefore it would have been obvious for one of ordinary skill in the art to optimize the system of John to heat the aerosol-generating material to correspond to the claimed duration for the benefit of ensuring vaporization of the material.
Regarding claim 2-7, John further teaches the temperature to which aerosol generating material 9 comprising flavorant is heated may also be varied for example, by the user varying the duration for which the actuator is actuated) to vary the taste intensity of the flavorant experienced by the user [0069] which reads on the limitation of receiving the input indicative of the user's desire to inhale an aerosol.
Regarding claim 9-10, John teaches the apparatus 1 comprises a plurality of cavities 178 containing aerosol generating material 9 [0103] and the aerosol generating material may be a dried gel.
Regarding claim 11-13, John teaches a plurality of cavities containing aerosol generating material 9 is heated by the heating elements 11a [0052] that are powered on each given draw may vary from draw to draw in accordance with a predetermined power control sequence controlled by the control circuitry 15 [0060] and powered sequentially, one per draw by a user [0061].
Regarding claim 14, Applicant’s specification as filed defines a temperature profile as the change of temperature of the heating element with time. John teaches that the plurality of heating elements 11a heats the plurality of the portion of the aerosol generating material may be controlled so as to reach any temperature between 200 to 800 C [0062]. Examiner is interpreting the heating of the plurality of the portion with the plurality of the heating elements 11a as a temperature profile.
Regarding claim 15, John teaches that in some examples the apparatus 1 is arranged so that the total volume of inlet airflow is admitted directly from exterior to the apparatus and is therefore initially at external ambient temperature on entry into the apparatus 1 to flow over the recesses 7a [0056].
Since it has been established that the recesses 7a is wherein the plurality of the portions of the aerosol generating materials are located, it is reasonably to expect that the aerosol generating materials are also substantially at ambient temperatures thereby reading on the limitation of “wherein the control circuitry is configured to begin heating each of the plurality of portions of aerosol generating material when the aerosol generating component is substantially at ambient temperature or at a preheat temperature”.
Regarding claim 19, John teaches aerosol-generating material may be a dried gel equivalent to the claimed amorphous solid.
Regarding claim 20 John teaches 0 to 50% of a tobacco extract in the aerosol generating material [0129] of which overlaps with the claimed tobacco extract of about 10-60%. It has been held that overlapping ranges are prima facie evidence of obviousness (See MPEP § 2144.05I) therefore it would have been obvious for one of ordinary skill in the art before the effective filling date of the claimed invention to modify the invention of John to correspond with that of the claimed invention.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747