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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/20/2026 has been entered.
Status of the Claims
Claims 15-29 are pending. Claims 15 and 17 have been amended.
Response to Arguments
Applicant’s arguments, see pages 6-7 of Remarks filed 2/20/2026, with respect to the rejection of claims 15 and 17 under 35 U.S.C. 103 have been fully considered and are persuasive. The Applicant has amended claims 15 and 17 to narrow the options for the one or more polymeric thickening agents such that they are no longer obvious over Fariss in view of Fuisz. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of newly found prior art Cameron in combination with previously presented prior art Fariss and Fuisz.
Applicant's further arguments filed 2/20/2026 have been fully considered but they are not persuasive.
Applicant argues (Page 7 of the Remarks) that “Fariss provides no motivation or guidance to the person of ordinary skill in the art for [the modification of Fariss]”. This argument is not persuasive as the claims were not rejected as being anticipated by Fariss, and therefore, Fariss is not required to disclose all of the limitations. Instead, claim 15 is rejected as obvious over Fariss in view of Fuisz and Cameron. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant further argues (Page 7 of the Remarks) that one having ordinary skill in the art “would not have been motivated to consider Fuisz to modify its formulation”. This argument is not persuasive as it is not the formulation of Fuisz which is modified but, instead, it would have been obvious to one having ordinary skill in the art at the time the application was filed to modify the formulation of Fariss based on the teachings of Fuisz.
Applicant’s first paragraph on Page 8 of the remarks is a verbatim copy of the last lines of Page 7 of the Remarks and are not persuasive for the same reasons stated above.
Applicant further argues (Page 8 of the Remarks) that “[t]he Office [a]ction’s conclusion regarding obviousness relies heavily on the impermissible benefit of hindsight knowledge of Applicant’s claimed invention.” This argument is not persuasive as the Office action takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure and is, therefore, not impermissible hindsight (See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971), MPEP § 2145(X)(A)).
Applicant further argues (Page 8 of the remarks) that “Fariss and Fuisz are incompatible”. This argument is not persuasive as the rejections do not combine Fariss and Fuisz but, instead, modifies Fariss based on the teachings of Fuisz.
Applicant further argues (Page 9 of the remarks) that Fuisz “actively teaches away from such a high aerosol-former content” because Fuisz “clearly emphasizes much lower levels of vapor agents, starting from 10%”. This argument is not persuasive because disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP § 2123(II)).
Applicant further argues (Page 10 of the Remarks) that Fuisz’s disclosure of sodium stearate as a surfactant “is only in the context of certain embodiments of Fuisz’s wax-based tobacco formulation. There is no suggestion in Fuisz that its surfactant is suitable for nontobacco wax compositions.” This argument is not persuasive as neither Fariss, Fuisz, nor the rejections concern “nontobacco wax compositions”, and Applicant has not given any rationale as to why these hypothetical “nontobacco wax compositions” would be relevant to the rejections.
Applicant further argues (Page 10 of the Remarks) that “Fuisz does not teach or suggest any problems that would have provided a reason reason [sic] why the person of ordinary skill in the art would arbitrarily have considered including an additional component.” This argument is not persuasive as the rejections did not add an additional component to the formulation of Fuisz but, instead, modifies Fariss based on the teachings of Fuisz.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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, Michael H Wilson can be reached at (571)270-3882. 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. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.G.C./Examiner, Art Unit 1747 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights