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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2026 March 4 has been entered.
Claims 16-17, 20-39, and 41 are pending. Claims 33-35 remain withdrawn.
Claims 16-17, 20-32, 36-39, and 41 are presently examined.
Claim Objections
Claims 17, 21, 23, and 40 are objected to because of the following informalities:
Claim 17, 21, 23, and 40: each claim is missing a colon after the claim status identifier.
Appropriate correction is required.
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 Stevens (US 3729009 A).
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, urea, a urea derivative, glucosamine, galactosamine, an inorganic ammonium compound, a nitrogen-containing plastic, and a combination thereof,
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.
Stevens teaches an aerosol-forming substrate (title) comprising urea (col. 4, lines 15-20, carbamide is another name for urea) constituting between 1 weight percent and 3 weight percent (col. 3, lines 29-31) on a dry weight basis based on the total amount of the aerosol-forming substrate, such that the urea reduces aldehyde amounts in aerosol in order to reduce a sharp and acrid smell (lines 15-20).
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 Stevens’ urea constituting between 1 weight percent and 3 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 a sharp and acrid smell for a user.
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 Stevens (US 3729009 A) 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 Stevens (US 3729009 A) 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.
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 Stevens.
Applicant’s arguments against Tan in view of Han (p. 8-9) are mooted by the new ground of rejection which does not rely on Tan or Han.
Conclusion
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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