CTFR 17/780,393 CTFR 98400 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Response to Amendment The office action is in response to Applicant’s amendment filed on 10/24/2025. Claims 1-25 and 27 are pending. Claims 16-23 are withdrawn for being directed to a non-elected group. Claim 1 is amended. Claim 26 is cancelled. Claim 27 is new. Response to Arguments Applicant' s arguments, see pages 6-11, filed 10/04/2025, with respect to the rejection(s) of claims 1-14 and 24-25 under 35 U.S.C. 103, have been fully considered and are not persuasive. The Applicant has amended claim 1 to include limitations from previously dependent claim 26, specifically regarding the discrete portions of aerosol-generating material “are configured such that each discrete portion may be heated and aerosolized separately.” On pages 6-8, the Applicant argues that amended claim 1 is not made obvious by the reference Renaud because Renaud fails to suggest a consumable including the strands arranged in a form such that they can be heated an aerosolized separately and rather Renaud teaches the strands are arranged in a plug as a whole and heated by convection and thus a plurality of strands will be heated and aerosolized simultaneously and it is not possible to individually heat and aerosolize each strand separately. The Applicant further argues that Renaud teaches away from claim 1 in that Renaud emphasizes the advantages of improving the distribution of heat across the aerosol-generating substrate. The Examiner respectfully does not find the arguments persuasive. The Applicant is arguing that the structure of Renaud would not be able to heat individual strands of aerosol-generating material, however there is no structure defined in claim 1 and claim 1 appears to be the intended use of the discrete portions of aerosol-generating material and does not provide any structure to the consumable but rather is directed to a method of using the consumable in the system and the intended result of using the device. The Applicant has not clearly articulated what structural requirements are needed such that each discrete portion may be heated and aerosolized separately. Furthermore, “may be heated and aerosolized separately” contains optional language. There is no requirement that each discrete portion is heated and aerosolized separately. All that is claimed is that the discrete portions are configured such that they may be heated and aerosolized separately. Even if Renaud teaches an embodiment that is preferable to have even heat distribution, there is no claimed structure that prevents Renaud from arranging the strands such that they may be heated separately. The claim limitation does not imply structural requirements and therefore is not given patentable weight because it is merely intended use and not a structural requirement. How the discrete portions are arranged as well as what the device is doing in order to heat a plurality of discrete portions individually matters. Thus, the strands of Renaud could be arranged in a similar way to heat each strand individually. The discrete portions of aerosol-generating material in Renaud could be heated separately, intentionally or unintentionally. The arrangement of discrete portions as taught by Renaud could obviously heat at different times, each strand is not generating an aerosol simultaneously and would be affected differently based on where they are located in the consumable. Therefore, it would be obvious to one of ordinary skill in the art that the discrete portions are arranged such that they are heated and aerosolized separately. The Examiner further notes that newly found prior art Horrod et al. (US-20200000148-A1) teaches a consumable comprising discrete portions of aerosol-generating material that may be heated and aerosolized separately ([0138]). On page 9, the Applicant argues that the inventors found that aerosolizing less than 15 mg of water during each puff provides the unexpected and advantageous effect of reducing hot and humid puffs, which Renaud does not even acknowledge the problem of hot puffs let alone suggest that this problem can be reduced and/or eliminated while enabling more rapid aerosol production by heating and aerosolizing each discrete portion of aerosol-generating material separately such that less than 15 mg water is aerosolized during each puff. The Examiner respectfully does not find the arguments persuasive. There is no requirement of the claims that 15 mg of water or less is in each puff and therefore there is no requirement for Renaud to teach that and further no requirement for Renaud to acknowledge any problem of “hot puffs.” Therefore, the arguments are not persuasive and the rejection stands. On page 10 the Applicant argues that Renaud does not teach new claim 27, specifically arguing that there is no disclosure of Renaud that teaches the discrete portions of aerosol-generating material are distributed on a support and arranged without physical contact with one another. The Examiner finds the arguments persuasive, however newly found and applied prior art addresses the claim as detailed below. The amendment made to claim 1 overcomes the double patenting rejection and the arguments are persuasive. Therefore, the double patenting rejection is withdrawn. The following is a modified rejection based on the amendments and newly added claim. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim s 1-6, 9, 11-15, 24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Renaud et al. (US-20120006343-A1) . In regards to claim 1, Renaud directed to an aerosol-generating substrate (i.e., consumable) for articles discloses the consumable is for use in a non-combustible aerosol provision system ([0003] and [0008]). Renaud further discloses the consumable comprising a plurality of strands (i.e., discrete portions) of aerosol generating material ([0024]). Renaud further discloses specific embodiments according to Table 1 wherein the total weight of the discrete portions range from 1.8 to 6.7 mg, and therefore the total weight of the water would obviously be less than 15 mgs for each individual discrete portion, absent evidence to the contrary. Regarding the claim limitation “wherein the discrete portions of aerosol-generating material are configured such that each discrete portion may be heated and aerosolized separately”, the Examiner notes that the claim language appears to be directed to the intended use of the discrete portions/strands of aerosol generating material and the claim does not appear to provide any structure to the aerosol-provision system. How the discrete portions are arranged as well as what the device is doing in order to heat a plurality of discrete portions individually matters and as there is no structure claimed to define how the discrete portions are heated separately, the claim language appears to be intended use of the consumable. To be given patentable weight the claim would need structural limitations that are not just mere intended use language (configured to). Thus, the strands of Renaud could be arranged in a similar way to heat each strand individually. Furthermore, the arrangement of discrete portions as taught by Renaud would obviously heat at different times, each strand is not generating an aerosol simultaneously and would be affected differently based on where they are located in the consumable. Therefore, it would be obvious to one of ordinary skill in the art that the discrete portions are arranged such that they are heated and aerosolized separately. The Examiner further notes that “may be” is an optional limitation of the claim and therefore there is no requirement that the discrete portions are heated and aerosolized separately. In regards to claim 2, Renaud discloses the consumable according to claim 1 comprising homogenized tobacco material which denotes a material formed by agglomerating particulate tobacco ([0020]). Since the homogenized strands are an agglomeration of particulate tobacco, it would be obvious to one of ordinary skill in the art that an agglomeration of particles would not create a crystalline structure and would instead be an amorphous non-crystalline structure and therefore homogenized strands are considered to read on an amorphous solid. In regards to claim 3, Renaud discloses the amorphous solid ([0020]) comprises: The use of extrinsic binders such as pectin’s and gums (i.e., gelling agent) less than about 3% percent on a dry weight basis ([0071]-[0073]). The range disclosed by the prior art overlaps the claimed range of 1-60 wt% of a gelling agent and is therefore considered prima facie obvious. an aerosol former content of between about 12% and about 25% by weight ([0076]). The range disclosed by the prior art overlaps the claimed range of 0.1-50 wt% of an aerosol-former material and is therefore considered prima facie obvious. And preferably, strands of homogenized tobacco according to the invention have a flavorant content of about 10% by weight or less ([0068]). The range disclosed by the prior art overlaps the claimed range of 0.1-80 wt% of an aerosol-former material and is therefore considered prima facie obvious. In regards to claim 4, Renaud discloses the amorphous solid ([0020]) comprises: The use of extrinsic binders such as pectin’s and gums (i.e., gelling agent) less than about 3% percent on a dry weight basis ([0071]-[0073]). The range disclosed by the prior art overlaps the claimed range of 1-50 wt% of a gelling agent and is therefore considered prima facie obvious. an aerosol former content of between about 12% and about 25% by weight ([0076]). The range disclosed by the prior art overlaps the claimed range of 0.1-50 wt% of an aerosol-former material and is therefore considered prima facie obvious. And preferably, strands of homogenized tobacco according to the invention have a flavorant content of about 10% by weight or less ([0068]) as well as tobacco content of between about 40% and about 85% by weight, more preferably of between about 50% and about 75% by weight on a dry (no water) weight basis ([0064]). It would be obvious to one of ordinary skill in the art that a tobacco material would add flavor and could act as a flavorant, therefore the range disclosed by the prior art overlaps the claimed range of 30-60 wt% of a flavorant and is therefore considered prima facie obvious. In regards to claims 5 and 6, Renaud discloses the gelling agent can comprise any binder known in the art but is not limited to: cellulosic binders such as, for example, hydroxypropyl cellulose, carboxymethyl cellulose, hydroxyethyl cellulose, methyl cellulose and ethyl cellulose; gums such as, for example, xanthan gum, guar gum, arabic gum and locust bean gum; polysaccharides such as, for example, starches, organic acids, such as alginic acid, conjugate base salts of organic acids, such as sodium-alginate, agar and pectins; and combinations thereof. (i.e., hydrocolloid) ([0072]). In regards to claim 9, Renaud discloses the aerosol-generating material comprises an aerosol generating agent including acids ([0057]). In regards to claim 11, Renaud discloses the aerosol forming material may include menthol ([0067]). In regards to claim 12, Renaud discloses the mass of at least one of the strands is 6.17 mg (Table 1, page 7). The range disclosed by the prior art overlaps the claimed range of each of the discrete portions comprising a mass of between 5 to 30 mg, and is therefore considered prima facie obvious. In regards to claim 14, Renaud discloses embodiments of the invention wherein the discrete portions comprise less than 5 mg total weight. Therefore the discrete portions of aerosol generating material comprise less than 5 mg of water (Table 1). In regards to claim 13, Renaud discloses a few examples of the mass of the discrete portions but does not explicitly disclose a discrete portion having a mass of between 10-20 mg. The prior art fails to teach a discrete portion having a mass of between 10-20 mg. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the mass of the discrete portion since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed mass is critical and has unexpected results. In the present invention, one would have been motivated to optimize the mass of the discrete portions motivated by the desire to increase the mass-to-surface ratio of the strands of homogenized tobacco material (discrete portions) which are advantageously capable of withstanding different modes of heat transfer, including convective heat transfer, due to their high mass-to-surface-area ratio and aerosol former content ([0030]). Therefore increasing the mass of the individual discrete portions would be advantageous to the prior arts invention and it would be obvious to one of ordinary skill to reasonably conclude that the mass of the discrete portions is a result effective variable that will affect the heat transfer of the aerosol generating material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the mass of the discrete portions to obtain a desired mass-to-surface-area ratio because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 II(B)). In regards to claim 24, Renaud discloses the consumable comprising an aerosol generating substrate which is heated in the smoking article, which is a high energy device (i.e., the non-combustible aerosol provision device) and generates an aerosol ([0005] and [0025]). It is obvious to one of ordinary skill in the art that where there is an aerosol generating device, there is an aerosol provision device comprising an aerosol-generating device. In regards to claim 25, Renaud discloses the device heats the plurality of discrete portions to generate an aerosol from the substrate/consumable ([0025]). The Examiner notes that claim 25 appears to be directed to the intended use of the discrete portions/strands of aerosol generating material but the claim does not appear to provide any structure to the method of using the device. How the discrete portions are arranged as well as what the device is doing in order to heat a plurality of discrete portions individually matters. Thus, the strands of Renaud could be arranged in a similar way to heat each strand individually. Further, the arrangement of discrete portions as taught by Renaud would obviously heat at different times, each strand is not generating an aerosol simultaneously and would be affected differently based on where they are located in the consumable. Therefore, it would be obvious to one of ordinary skill in the art that the discrete portions are arranged such that they are heated and aerosolized separately . 07-22-aia AIA Claim s 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Renaud et al. (US-20120006343-A1) , as applied to claim 1 above, and further in view of John et al. (US 20160295922 A1, as previously cited) . In regards to claim 7, Renaud discloses the use of sodium-alginate as a gelling agent but does not explicitly disclose a calcium-crosslinked alginate and/or calcium-crosslinked pectin. Renaud does disclose that any binder can be used that is known in the art ([0072]). John directed to a gel based (i.e., amorphous) aerosol-generating material, discloses the aerosol generating material can comprise binders (i.e., gelling agents), tobacco material, aerosol formers, and flavorants ([0108]-[0110]). John further discloses the gel is formed by a combination of cross-linking and drying ([0208]). John further discloses calcium carbonate is added to the aerosol generating material and the binder can further comprise calcium alginate (i.e., calcium-crosslinked alginate) ([0086] and [0091]). Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to look to a similar reference for a known suitable binder, especially when Renaud teaches any binder known in the art can be used in the invention ([0072]), and this merely involves applying a known suitable binder of a similar aerosol generating material to yield predictable results. In regards to claim 8, Renaud discloses the one or more flavorants may be added to particulate tobacco before, during or after agglomeration of the particulate tobacco to form strands of homogenized tobacco material according to the invention and further discloses the flavorants include but are not limited to menthol, spearmint, peppermint, eucalyptus, vanilla, cocoa, chocolate, coffee, tea, spices (such as cinnamon, clove and ginger), fruit flavorants and combinations thereof (i.e., botanicals) ([0067]-[0069]). Renaud does not explicitly disclose the aerosol- generating material comprises one or more of powdered botanical material, nicotine, and a tobacco extract. John, directed to an amorphous aerosol-generating material, discloses the aerosol generating material can comprise flavorants and extracts in any suitable form, such as powders (i.e., powdered botanicals) ([0070]). John further discloses the aerosol generating material can comprise any one or more of powdered botanical material ([0070]), nicotine ([0072]), and tobacco extract ([0076]). Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Renaud, since Renaud is merely silent to the form of the botanical used in the flavorant and/or the tobacco material, by making Renaud have a powdered botanical, as taught by John, because both are directed to amorphous aerosol generating materials, John teaches any suitable form of extract can be used, such as powders ([0070]), and this merely involves applying a known form of a similar flavorant or extract of a similar aerosol generating material to yield predictable results . 07-22-aia AIA Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Renaud et al. (US-20120006343-A1) as applied to claim 1 above, and further in view of Watanabe et al. (US 20210092992 A1) . In regards to claim 10, Renaud discloses the aerosol former can comprise aliphatic esters of mono-, di- or polycarboxylic acids ([0057]), but does not explicitly disclose the aerosol-generating material comprises benzoic acid. Watanabe, directed to an electronic cigarette filler, discloses a composition comprising an aerosol former, microcrystalline cellulose, and flavorants ([0008] and [0086]). Watanabe further discloses benzoic acid is added to the aerosol former and acts as a preservative for food ([0088]). Therefore, before the effective filling date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Renaud by making the aerosol composition further comprise benzoic acid, as taught by Watanabe, because both are directed to aerosol compositions, Watanabe teaches the benzoic acid is a preservative for the composition ([0088]) and this merely involves substituting one known acid in the art for another known acid in the art to yield predictable results . 07-22-aia AIA Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Renaud et al. (US-20120006343-A1) as applied to claim 1 above, and further in view of Horrod et al. (US-20200000148-A1) . In regards to claim 27, Renaud discloses the consumable comprising a plurality of strands (i.e., discrete portions) of aerosol generating material ([0024]) and the device heats the plurality of discrete portions to generate an aerosol from the substrate/consumable ([0025]), but does not explicitly disclose the plurality of discrete portions of aerosol-generating material are deposited on a support such that each discrete portion of aerosol-generating material is not in contact with any of the other discrete portions of aerosol-generating material. Horrod, directed to an apparatus for heating a smokable material, discloses the apparatus designed for heating smoking material to volatize at least one component of the smokable material ([0004]). Horrod further discloses the article comprises a carrier 10 (i.e., support) which comprises a plurality of discrete portions of smokable material 20 (i.e., discrete portions of aerosol- generating material) ([0073]) deposited on the support such that each discrete portion of aerosol-generating material is not in contact with any of the other discrete portions of aerosol-generating material (Figures 1-3 and [0131]-[0134]). Horrod further discloses the controller 124 of the apparatus 300 may be used so that aerosol continues to be formed and released over time, until for example the smokable material 20a, 20b becomes exhausted of volatilizable components of the smokable material (i.e., configured to aerosolize each individual discrete portion of aerosol-generating material) ([0138]). Horrod further discloses the article is configured so that one of the discrete quantities of smokable material 20 is heatable in use while inhibiting heating of another of the discrete quantities of smokable material 20 ([0102]). Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Renaud by modifying the plurality of discrete portions of aerosol-generating material to be deposited on a support such that the individual discrete portions are not in contact with one another, as taught by Horrod, because both are directed to heating of discrete portions of aerosol-generating material, Horrod teaches the discrete portions are arranged on a support and spaced apart from one another to heat only one discrete portion at a time such that aerosol continues to be formed and released over time ([0138]), and this merely involves applying a known technique of applying discrete portions of aerosol-generating material on a support of a similar device to yield predictable results. Conclusion 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). 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 MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755 Application/Control Number: 17/780,393 Page 2 Art Unit: 1755 Application/Control Number: 17/780,393 Page 3 Art Unit: 1755 Application/Control Number: 17/780,393 Page 4 Art Unit: 1755 Application/Control Number: 17/780,393 Page 5 Art Unit: 1755 Application/Control Number: 17/780,393 Page 6 Art Unit: 1755 Application/Control Number: 17/780,393 Page 7 Art Unit: 1755 Application/Control Number: 17/780,393 Page 8 Art Unit: 1755 Application/Control Number: 17/780,393 Page 9 Art Unit: 1755 Application/Control Number: 17/780,393 Page 10 Art Unit: 1755 Application/Control Number: 17/780,393 Page 11 Art Unit: 1755 Application/Control Number: 17/780,393 Page 12 Art Unit: 1755 Application/Control Number: 17/780,393 Page 13 Art Unit: 1755 Application/Control Number: 17/780,393 Page 14 Art Unit: 1755 Application/Control Number: 17/780,393 Page 15 Art Unit: 1755 Application/Control Number: 17/780,393 Page 16 Art Unit: 1755
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