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 .
Response to Submission
Applicant’s submission filed on 2026 July 20 has been entered. Claims 16-17, 20-39, and 41-42 are pending. Claims 33-35 remain withdrawn.
Claims 16-17, 20-32, 36-39, and 41-42 are presently examined.
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.
Claims 16-17, 20-22, 24-32, and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Deforel (WO 2018122095 A1 cited on an IDS) in view of Tian (CN 104957764 A with reference made to machine translation).
Claims 16, 31, and 41: Deforel teaches an aerosol-forming substrate (p. 14, Table 1), comprising:
a) cellulose material (cellulose powder);
b) an aerosol-former (glycerine; p. 9, lines 18-19, glycerine forms aerosol) present in an amount of 20 weight percent (p. 14, Table 1, glycerine makes 20%) on a dry weight basis based on a total amount of the aerosol-forming substrate;
c) 0 weight percent of tobacco (tobacco is not a listed ingredient) on a dry weight basis based on the total amount of the aerosol-forming substrate;
e) a disaccharide (p. 5, lines 29-33, lactose and/or sucrose).
Deforel does not explicitly teach a nitrogen-containing nucleophilic compound selected from the group consisting of a tripeptide, a urea derivative, glucosamine, galactosamine, an inorganic ammonium compound, a nitrogen-containing plastic, and a combination thereof,
that the aerosol-forming substrate is configured for providing an aerosol reduced in the amount of aldehydes compared to an aerosol-forming substrate which does not contain the nitrogen-containing nucleophilic compound,
and the nitrogen-containing nucleophilic compound makes from 0.2 weight percent to 5 weight percent on a dry weight basis based on the total amount of the aerosol-forming substrate.
Tian teaches an aerosol-forming substrate (title) comprising an inorganic ammonium compound ([11-12], ammonium carbonate, ammonium bicarbonate, ammonium phosphate, diammonium hydrogen phosphate) constituting between 0.5 weight percent and 4 weight percent on a dry weight basis based on the total amount of the aerosol-forming substrate, such that the inorganic ammonium compound lowers aldehyde amounts [11] in order to reduce toxicity [5].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to add Tian’s inorganic ammonium compound constituting between 0.5 weight percent and 4 weight percent on a dry weight basis based on the total amount of the aerosol-forming substrate, which would reduce aldehyde amounts in aerosol, because doing so would reduce toxicity.
Claim 17: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the weight percent of the tobacco is 0 weight percent (p. 14, Table 1, tobacco is not a listed ingredient).
Claim 20: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the disaccharide is selected from the group consisting of sucrose, lactose, and a combination thereof (p. 5, lines 29-33, sucrose and/or lactose).
Claim 21: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the aerosol-forming substrate is substantially free of tobacco (p. 14, Table 1, tobacco is not a listed ingredient).
Claim 22: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the cellulose material is cellulose (p. 14, Table 1, cellulose).
Claim 24: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the aerosol-former is a polyhydric alcohol (p. 14, Table 1, glycerine is a polyhydric alcohol).
Claim 25: modified Deforel teaches the aerosol-forming substrate according to claim 16, further comprising: f) nicotine (p. 14, Table 1, nicotine lactate).
Claim 26: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the aerosol-forming substrate is formed as a sheet (p. 15, line 8, the composition is cast and dried into a sheet).
Claim 27: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the aerosol-forming substrate is formed as a casted sheet (p. 15, line 8, the composition is cast and dried into a sheet).
Claim 28: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the cellulose material is present in an amount of 15 weight percent to 85 weight percent (p. 14, Table 1, cellulose makes 43.1%) on a dry weight basis based on the total amount of the aerosol-forming substrate.
Claim 29: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the cellulose material is present in an amount of 25 weight percent to 70 weight percent (p. 14, Table 1, cellulose makes 43.1%) on a dry weight basis based on the total amount of the aerosol-forming substrate.
Claim 30: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the aerosol-former is present in an amount exemplified at 20 weight percent (p. 14, Table 1, glycerine makes 20%) and disclosed between 5 percent and 35 weight percent (p. 9, lines 33-35) on a dry weight basis based on the total amount of the aerosol-forming substrate.
Modified Deforel does not explicitly teach that the aerosol-former is present in an amount of 25 weight percent to 45 weight percent on a dry weight basis based on the total amount of the aerosol-forming substrate.
Deforel teaches that glycerine is an aerosol-former (p. 9, lines 12-21) which means that the amount of glycerine is a result-effective variable that controls an amount of formed aerosol (lines 12-21).
Furthermore, Deforel’s 5%-35% range overlaps with the claimed 25%-45% range. The courts have held that a prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The courts have held that prior art teaching carbon monoxide concentrations of “about 1-5%” renders obvious a claim reciting carbon monoxide concentrations of “more than 5%.” In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941). The courts have held that prior art renders obvious a claim reciting an overlapping endpoint, particularly when there is no showing of criticality of the claimed range.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to routinely optimize Deforel’s glycerine mass to an amount between 25 weight percent and 45 weight percent on a dry weight basis based on the total amount of the aerosol-forming substrate, because doing so would optimize the amount of aerosol formed by the glycerine and would otherwise be taught by overlapping ranges.
Claim 32: modified Deforel teaches an aerosol-generating article (fig. 2 and p. 16, lines 28-30, #1000), comprising: a substrate portion (#1020 contains the disclosed sheet) containing an aerosol-forming substrate according to claim 16, wherein the substrate portion (1020) in the aerosol-generating article is in a form of a rod.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Deforel (WO 2018122095 A1 cited on an IDS) in view of Tian (CN 104957764 A with reference made to machine translation) as applied to claim 16 in further view of Zhuang (US 20070000505 A1).
Claim 23: modified Deforel teaches the aerosol-forming substrate according to claim 22.
Modified Deforel does not explicitly teach that the cellulose material is cellulose acetate or carboxymethyl-cellulose.
Zhuang teaches an aerosol-forming substrate (title) comprising a cellulosic material ([73], cellulosic binder material) that can be alternatives of cellulose powder and carboxymethyl cellulose, each of which helps to bind the aerosol-forming substrate [73].
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to substitute Zhuang’s carboxymethyl cellulose for Deforel’s cellulose powder, because doing so would be a simple substitution of cellulose materials that help to bind the aerosol-forming substrate.
Claims 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over Deforel (WO 2018122095 A1 cited on an IDS) in view of Tian (CN 104957764 A with reference made to machine translation) as applied to claim 16 and evidenced by Li (“Properties of Cellulose/Turmeric Powder Green Composite Films”).
Claim 36: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the cellulose material forms a matrix (Li p. 1, “INTRODUCTION”, “Cellulose fiber” p. 2, “Structure and properties”, cellulose dissolved into a mixture forms a matrix) for the aerosol-former (Deforel p. 14, Table 1, glycerine).
Claim 37: modified Deforel teaches the aerosol-forming substrate according to claim 36, wherein the aerosol-forming substrate is substantially free of tobacco (p. 14, Table 1, tobacco is not a listed ingredient).
Claim 38: modified Deforel teaches the aerosol-forming substrate according to claim 36, wherein the cellulose material is present in an amount of 25 weight percent to 70 weight percent (p. 14, Table 1, cellulose makes 43.1%) on a dry weight basis based on the total amount of the aerosol-forming substrate.
Claim 39: modified Deforel teaches the aerosol-forming substrate according to claim 37, wherein the cellulose material is present in an amount of 25 weight percent to 70 weight percent (p. 14, Table 1, cellulose makes 43.1%) on a dry weight basis based on the total amount of the aerosol-forming substrate.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Deforel (WO 2018122095 A1 cited on an IDS) in view of Tian (CN 104957764 A with reference made to machine translation) as applied to claim 16 in further view of Riggs (US 5178167 A) as evidenced by “Carbonyl group” and “Reactions of Aldehydes and Ketones with Amines” (hereinafter LibreTexts).
Claim 42: modified Deforel teaches the aerosol-forming substrate according to claim 16, wherein the nitrogen-containing nucleophilic compound can instead be amino acids [Tian 11].
Modified Deforel does not explicitly teach that the amino acids form a tripeptide.
Riggs teaches an aerosol-forming substrate (title, smoking article) and a fuel composition (carbonaceous composition) for modifying characteristics of the aerosol-forming substrate (smoking article), wherein the fuel composition comprises compounds that can release ammonia (col. 3, lines 39-56) which are exemplified as alternatives of urea, ammonium carbonate, diammonium triphosphate, amino acids, and tripeptides, such that the compounds can lower carbonyl compound amounts (lines 42-47).
“Carbonyl group” teaches that aldehydes are examples of carbonyl compounds.
LibreTexts teaches that aldehydes react with ammonia and 1°-amines to form imines (p. 1). One of ordinary skill would see that Tian’s amino acids of generic chain length and Riggs’s amino acids bonded in triplicate into tripeptides can achieve the same outcome of reacting with and thus neutralizing aldehydes.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant invention to specify that Tian’s exemplified amino acids are linked into a tripeptide, as taught by Riggs, because doing so would release ammonia that reacts with toxic aldehydes to form imines.
Response to Arguments
Applicant’s arguments of 2026 March 4 have been carefully considered. Upon further search and consideration necessitated by applicant’s amendments, a new ground of rejection is made for claim 16 over Deforel in view of Tian.
Applicant argues (p. 9-10) that Deforel in view of Stevens does not teach amended claim 16’s species which no longer encompass urea. However, Deforel in view of Tian teaches amended claim 16’s inorganic ammonium compound for the benefit of reducing toxic aldehydes.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tobey C. Le whose telephone number is (703)756-5516. The examiner can normally be reached Mon-Thu 8:30-18:30 ET.
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/TOBEY C LE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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