DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 15-29 are pending.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 6/30/2026 containing remarks to the claims.
Response to Arguments
Applicant's arguments filed 6/30/2026 have been fully considered but they are not persuasive.
Applicant argues (Remarks, Pages 3-4) that one having ordinary skill in the art would not combine Fariss and Cameron because Fariss uses at least one of propylene glycol and glycerin and Cameron doesn’t use propylene glycol or glycerin. This argument is not persuasive as Cameron discloses that its formulation can be used with up to 95% of propylene glycol and/or glycerin (“the vaporizable liquid composition comprises less than about 95 wt. % of propylene glycol”, ¶ 0049; “the vaporizable liquid composition comprises less than about 95 wt. % of vegetable glycerin”, ¶ 0050; and “the vaporizable liquid composition comprises less than about 95 wt. % of propylene glycol and vegetable glycerin”, ¶ 0051).
Similarly, Applicant’s statement (Remarks, Page 4) that “Cameron very specifically teaches that [the formulation] does not include propylene glycol and/or glycerin” is not persuasive as Cameron teaches that the formulation can include propylene glycol and/or glycerin (¶ 0049-0051).
Similarly, Applicant’s statement (Remarks, Page 4) that “Cameron explicitly teaches against using propylene glycol and glycerin” is not persuasive as Cameron teaches using propylene glycol and glycerin (¶ 0049-0051).
Similarly, Applicant’s statement (Remarks, Page 4) that “Cameron does not teach that PVA could be substituted for PEG in a formulation which includes propylene glycol and glycerin” is not persuasive as Cameron teaches that PVA is an alternative to PEG, as discussed in the rejection below, and the formulation includes propylene glycol and glycerin (¶ 0049-0051).
Applicant further argues (Remarks, Page 5) that Cameron discloses PEG in a list, and “the selection of PEG from the list is not straightforward”. This argument is not persuasive as Applicant has not presented evidence by either Affidavit or Declaration that picking an item from a list “is not straightforward”.
Applicant further argues (Remarks, Page 5) that “In view of the explanation presented above, it is clear that the asserted reasoning in the Office [a]ction can only be based on the improper benefit of hindsight knowledge”. As Applicant’s statements that Cameron does not disclose using propylene glycol or glycerin and that picking an item from a list “is not straightforward” are not persuasive, Applicant’s allegation that these statements demonstrate impermissible hindsight are also not persuasive.
Claim Rejections - 35 USC § 103
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.
Claims 15-17 and 20-29 are rejected under 35 U.S.C. 103 as being unpatentable over Fariss et al. (US 2018/0220697 A1) in view of Fuisz et al. (US 2018/0199618 A1) and Cameron (US 2017/0119040 A1).
Regarding claim 15, Fariss discloses a formulation for an aerosol-generating system (“pre-vapor formulation that may be included in an e-vaping device”, abstract), the formulation comprising:
one or more aerosol formers (“vapor former”, ¶ 0069);
one or more metal salts (“salt solution”, ¶ 0070, 0074); and
one or more polymeric thickening agents (“polyethylene glycol (PEG) compound”, ¶ 0070, 0076),
wherein the formulation has a polymeric thickening agent content of greater than or equal to about 0.5 percent by weight (“the polyethylene glycol compound may be included in the pre-vapor formulation in a concentration that is greater than about 0% and is equal to or less than about 50% by weight based on the weight of the pre-vapor formulation”, ¶ 0077; the range greater than about 0 percent and equal to or less than about 50 percent by weight overlaps the claimed range of greater than or equal to about 0.5 percent by weight, see MPEP § 2144.05(I)), and
wherein the formulation has an aerosol former content of greater than 70 percent by weight (“the vapor former is included in an amount ranging from about 40% by weight based on the weight of the pre-vapor formulation to about 90% by weight based on the weight of the pre-vapor formulation”, ¶ 0088; the range about 40 percent to about 90 percent by weight overlaps the claimed range of greater than 70 percent by weight, see MPEP § 2144.05(I)).
However, Fariss does not disclose wherein the one or more metal salts include one or more metal stearates.
Fuisz, in the same field of endeavor, teaches including sodium stearate (“sodium stearate”, ¶ 0075) in a formulation for an aerosol-generating system (“compositions suitable for use in a vaporizer”, abstract). Fuisz also teaches a benefit of including surfactants such as sodium stearate in that they promote mixing (¶ 0075). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the formulation taught by Fariss to include sodium stearate, as taught by Fuisz, in order to obtain this benefit.
While Fariss does disclose one or more polymeric thickening agents consisting of polyethylene glycol (“polyethylene glycol”, ¶ 0076), Fariss does not disclose that the one or more polymeric thickening agents is selected from the group consisting of: polyvinyl alcohol, polypropylene glvcol, and starch.
Cameron, in the same field of endeavor, teaches including polyvinyl alcohol as an alternative to polyethylene glycol (“polyvinyl alcohol” or “polyethylene glycol”, ¶ 0087) in a formulation for an aerosol-generating system (“vaporizable liquid composition”, ¶ 0087). Further, Cameron teaches that polyvinyl alcohol and polyethylene glycol function as a stabilizer (“stabilizer”, ¶ 0087 of Cameron), which is the same function that Fariss teaches for polyethylene glycol (“increase the stability”, ¶ 0080 of Fariss). Because Cameron teaches the interchangeability of polyvinyl alcohol and polyethylene glycol, one of ordinary skill in the art would have understood that substitution of polyvinyl alcohol in place of polyethylene glycol would predictably provide the same result of stabilizing the formulation. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted the polyvinyl alcohol stabilizer taught by Cameron in place of the polyethylene glycol stabilizer taught by Fariss (see MPEP § 2143(I)(B)).
Regarding claim 16, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fariss further discloses wherein the formulation has a polymeric thickening agent content of between about 5 percent by weight and about 20 percent by weight (“the polyethylene glycol compound may be included in the pre-vapor formulation in a concentration that is greater than about 0% and is equal to or less than about 50% by weight based on the weight of the pre-vapor formulation”, ¶ 0077; the range greater than about 0 percent and equal to or less than about 50 percent by weight overlaps the claimed range of between about 5 percent by weight and about 20 percent by weight, see MPEP § 2144.05(I)).
Regarding claim 17, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Cameron discloses wherein the one or more polymeric thickening agents consists of polyvinyl alcohol (“polyvinyl alcohol”, ¶ 0087).
Regarding claim 20, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fuisz further discloses wherein the formulation has a metal stearate content of greater than or equal to about 0.5 percent (“Surfactants may comprise 0.01% to 5%”, ¶ 0075; the range 0.01 percent to 5 percent overlaps the claimed range of greater than or equal to about 0.5 percent, see MPEP § 2144.05(I)).
Regarding claim 21, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fuisz further discloses wherein the one or more metal stearates comprise sodium stearate (“sodium stearate”, ¶ 0075).
Regarding claim 22, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fariss further discloses wherein the one or more aerosol formers comprise glycerine (“glycerin”, ¶ 0069).
Regarding claim 23, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 22, as stated above. Fariss further discloses wherein the one or more aerosol formers comprise glycerine and propylene glycol (“glycerin” and “propylene glycol”, ¶ 0069).
Regarding claim 24, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 23, as stated above. Fariss further discloses wherein a ratio of the weight percent glycerine content to the weight percent propylene glycol content of the formulation is greater than or equal to about 1.5 (“the ratio of propylene glycol and glycerin may be substantially 2:3 and 3:7”, which corresponds to a ratio of glycerine to propylene glycol of substantially 3:2 = 1.5 and 7:3 = 2.33, substantially 1.5 and 2.33 are included in the claimed range of greater than or equal to about 1.5, see MPEP § 2131.03).
Regarding claim 25, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fariss further discloses wherein the formulation has an aerosol former content of greater than or equal to about 80 percent by weight (“the vapor former is included in an amount ranging from about 40% by weight based on the weight of the pre-vapor formulation to about 90% by weight based on the weight of the pre-vapor formulation”, ¶ 0088; the range about 40 percent to about 90 percent by weight overlaps the claimed range of greater than or equal to about 80 percent by weight, see MPEP § 2144.05(I)).
Regarding claim 26, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fariss also discloses the formulation further comprising water (“water”, ¶ 0069).
Regarding claim 27, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fariss further discloses wherein the formulation has a water content of less than or equal to about 30 percent by weight (“Water can be included in an amount ranging from about 5% by weight based on the weight of the pre-vapor formulation to about 40% by weight based on the weight of the pre-vapor formulation”, ¶ 0089, the range about 5 percent to about 40 percent by weight overlaps the claimed range of less than or equal to about 30 percent by weight, see MPEP § 2144.05(I)).
Regarding claim 28, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fariss in view of Fuisz and Cameron further teaches an aerosol-generating article (“cartridge” with “reservoir”, ¶ 0002 of Fariss) for an aerosol-generating system (“e-vaping device”, ¶ 0002 of Fariss), the aerosol-generating article containing a formulation according to claim 15 (“pre-vapor formulation”, ¶ 0002 of Fariss, where the formulation has the obvious modifications taught by Fuisz and Cameron discussed in the rejection of claim 15 above).
Regarding claim 29, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. Fariss in view of Fuisz and Cameron further teaches an aerosol-generating system (“e-vaping device”, ¶ 0002 of Fariss), comprising:
a formulation according to claim 15 (“pre-vapor formulation”, ¶ 0002 of Fariss, where the formulation has the obvious modifications taught by Fuisz and Cameron discussed in the rejection of claim 15 above); and
an atomizer (“heater”, ¶ 0002) configured to generate an aerosol from the formulation (“vapor”, ¶ 0002).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Fariss et al. (US 2018/0220697 A1) in view of Fuisz et al. (US 2018/0199618 A1) and Cameron (US 2017/0119040 A1) as applied to claim 15 above, and further in view of Sakurai et al. (US 2021/0120867 A1).
Regarding claim 18, Fariss in view of Fuisz and Cameron teaches the formulation according to claim 15, as stated above. However, Fariss does not disclose the formulation further comprising one or more metal salts selected from the group consisting of: metal alginates, metal benzoates, metal cinnamates, metal cycloheptanecarboxylates, metal levulinates, metal propanoates, and metal undecanoates.
Sakurai, in the same field of endeavor, teaches including a metal undecanoate (“sodium 4-hydroxyundecanoate”, ¶ 0076) in a formulation for an aerosol-generating system (“filler 11” volatilized by “electric heating device 20”, ¶ 0085). Sakurai further teaches a benefit to including the metal undecanoate in the formulation in that it imparts favorable flavor and taste (¶ 0076). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the formulation taught by Fariss to include the metal undecanoate taught by Sakurai in order to obtain this benefit.
Regarding claim 19, Fariss in view of Fuisz, Cameron, and Sakurai teaches the formulation according to claim 18, as stated above. Sakurai further discloses wherein the one or more metal salts are selected from the group consisting of metal cinnamates, metal cycloheptanecarboxylates, and metal undecanoates (“sodium 4-hydroxyundecanoate”, ¶ 0076).
Conclusion
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.
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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