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 .
Status of the Claims
Claims 1-5 and 7-16 are pending and are subject to this Office Action. Claims 11-15 have been withdrawn. Claims 6 has been cancelled.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 12/26/2025 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see page 5, filed 12/26/2025, with respect to the rejection of claim 6 under 35 USC 112(d) have been fully considered and are persuasive. The Applicant has cancelled claim 6, therefore the rejection of claim 6 under 35 USC 112(d) has been withdrawn.
Applicant's arguments filed 12/26/2025 have been fully considered but they are not persuasive.
On pages 6-7, the Applicant argues that the aerogel of Duc is a layer of fibre-reinforced aerogel that "exhibits superior mechanical properties and is more flexible and machinable compared to non-reinforced aerogels" such that the fibre-reinforced aerogel may be used to circumscribe at least a portion of the length of a combustible heat source, while the aerogel of Nordskog may be in the form of a plurality of particles and fails to disclose or suggest that the aerogel includes fibers. The Applicant further argues that a person of ordinary skill in the art would not consider modifying the plurality of particles of aerogel of Nordskog to include any of the components of the layer of fibre-reinforced aerogel of Duc given the difference in form and content of the aerogels. The Examiner does not find this to be persuasive. First, the aerosol of Nordskog is not only limited to being in the form of a plurality of particles, as the aerogel may be in the form of a single monolithic structure or in the form of a plurality of particles [0022], and thus the aerogel of Duc is of a similar form to Nordskog. Further, both Nordskog and Duc are directed to silica aerogels used in smoking articles. Just because Duc teaches aerogel with fibers has superior properties, does not mean that the suitability of silica in an aerogel for a similar smoking article would not be apparent and could not be used from Duc. The courts have 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.” See MPEP § 2144.05 II. Therefore, as Nordskog is silent to the amount of silica in the silica aerogel, it would be obvious for one having ordinary skill in the art to look to other known teachings of silica aerogels that one of ordinary skill could apply to Nordskog with a reasonable expectation of success in the silica amount being suitable for use in the silica aerogel, such as the teaching in Duc of the amount of silica within a silica aerogel.
On pages 7-8, the Applicant argues that there is no teaching or suggesting in either Nordskog or Duc the amount of gelling agent, nor does Nordskog provide any teaching or suggestion that the only components of the aerosol are silica, an aerosol-generating material, and a gelling agent. The Examiner does not find this to be persuasive because Nordskog teaches aerogels are formed by creating a gel in solution and then carefully removing the liquid to leave the aerogel structure intact. Generally, a gel is produced by combining a metal-based compound precursor, a gelling agent and a liquid [0027]. As the aerogel may be a silica aerosol [0025] and may be coated with at least one aerosol-forming material and/or flavoring agent [0020], Nordskog reasonably teaches that the silica aerogel is considered to consist of silica (i.e. absorbent), a gelling agent (i.e. binder), and an aerosol-forming material and/or flavorant. Therefore, by teaching the amount of silica, aerosol-forming material, and flavorant of the aerogel, this reasonably suggests that the remainder material of the aerogel would be the gelling agent, absent evidence to the contrary.
The following is the maintained rejection.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-3, 5, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US2017/0238607) as evidenced by Rasouli (US2015/0114405) and in view of Duc (US2019/0274350).
Regarding claims 1-2 and 5, Nordskog discloses:
A population of particles for use in a non-combustible aerosol provision system (aerogel that may be in the form of a plurality of particles, [0020]- [0022]).
Wherein each particle comprises (i) a gelling agent ([0027]), (ii) an absorbent, wherein the absorbent comprises silica or a silicate (wherein the aerogel may be a silica aerogel [0025], which the applicant’s specification teaches is known to be an absorbent (page 4, second paragraph) also reading on claim 5), and (iii) an aerosol-generating material (aerosol forming material, [0053]). The aerosol forming material reads on an aerosol-former material as recited in claim 2.
Wherein the population of particles has a bulk density of between about 0.01 g/cm3 to about 0.5 g/cm3 ([0023]).
Nordskog does not explicitly disclose (I) the gelling agent is a binder, (II) wherein the population of particles has a bulk density of between about 0.6 and about 1.1 g.cm3, and (III) wherein the weight ratio of absorbent to binder.
In regard to (I), Rasouli, directed to directed to a smoking article that comprises a tobacco aerogel, teaches:
Aerogels can be formed by creating a gel in solution and then carefully removing the liquid to leave the aerogel structure intact. The gel is formed by combining tobacco with a gelling agent and a liquid ([0023]).
As Rasouli teaches that the gelling agent forms the gel that leaves the aerogel structure intact (i.e. binds the structure), Rasouli teaches that gelling agents are binders. Therefore, the gelling agent as taught by Nordskog is considered to read on the claim limitation a binder.
In regard to (II), as Nordskog teaches about 0.5 g/m3 ([0023]), this includes bulk density that is slightly above and below 0.5 g/m3, such as 10% above 0.5 g/m3 which would include 0.55 g/m3. Further, the claim recites a bulk density of between about 0.6 and 1.1 g/m3. About 0.6 g/m3 includes bulk density that is slightly about and below 0.6 g/m3, such as 10% below 0.6 g/m3 which would include 0.54 g/m3. Therefore, as the range taught by the prior art of about 0.5 g/cm3 to about 0.01 g/cm3 overlaps the claimed range of about 0.6 and 1.1 g/m3, the claim is considered to be prima facie obvious. Further, the Courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05 (I).
In regard to (III), Nordskog further teaches:
The aerogel may be coated with at least one aerosol-forming material and/or flavoring agent ([0020]). In certain embodiments, the aerogel is a silica aerogel ([0025]). Aerogels are formed by creating a gel in solution and then carefully removing the liquid to leave the aerogel structure intact. Generally, a gel is produced by combining a metal-based compound precursor, a gelling agent and a liquid ([0027]).
As such, the silica aerogel is considered to consist of silica (i.e. absorbent), a gelling agent (i.e. binder), and an aerosol-forming material and/or flavorant.
The amount of either the flavoring agent and/or aerosol-forming material in the aerogel is more often about 1 to about 20 wt. % ([0054]).
Nordskog is silent to the amount of silica and gelling agent in the silica aerogel.
Duc, directed to an aerosol-generating article that comprises an aerogel, teaches:
A silica aerogel that may comprise between about 30 percent by weight and about 40 percent by weight of synthetic amorphous silica ([0036]- [0037]).
Therefore, as Nordskog is silent to the amount of silica in the silica aerogel, it would be obvious for one having ordinary skill in the art to look to other known teachings of silica aerogels that one of ordinary skill could apply to Nordskog with a reasonable expectation of success in the silica amount being suitable for use in the silica aerogel. As such, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to incorporate to Nordskog the silica aerogel comprising between 30 and 40 wt.% of synthetic amorphous silica as taught by Duc, because both Nordskog and Duc are directed to smoking articles that comprise silica aerogel, and this merely involves incorporating a known amount of silica to a similar aerogel to yield predicable results.
The amount of gelling agent (i.e. binder) would be the remainder weight percent of the silica aerogel after taking into account the amount of silica and the flavoring and/or aerosol-forming material. Therefore, the amount of gelling agent in the silica aerosol is considered to be between 10 and 69.5 wt.%, yielding a weight ratio of absorbent to binder being about 0.43:1 to 4:1. The range taught by the prior art overlaps the claimed range of between about 1.3:1 to about 1.9:1 and is therefore prima facie obvious.
Regarding claim 3, Nordskog discloses:
Wherein the aerosol generating material comprises a flavor ([0052]- [0053], flavoring agent).
Regarding claim 7, Nordskog discloses:
Wherein the aerosol-generating material is present in an amount of between about 0.5 wt.% to about 50 wt.% of the total weight of the particles ([0054]). In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). The range taught by the prior art overlaps the claimed range of 50 wt.% and 90 wt.% and is therefore considered to be prima facie obvious.
Claim(s) 4 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US2017/0238607) as evidenced by Rasouli (US2015/0114405) and in view of Duc (US2019/0274350) as applied to claim 1 above, and further in view of Zhuang (US2007/0000505).
Regarding claims 4 and 16, Nordskog further teaches that the gelling agent promotes formation of the gel and can be acidic or basic in nature including but not limited to mineral acids or ammonia-based compounds and precursors (e.g., NH.sub.4Cl) ([0027]). Nordskog is silent to more specific binder types such as wherein the binder comprises cellulose or a cellulose derivative as recited in claim 4 and wherein the binder comprises microcrystalline cellulose as recited in claim 16.
Zhuang, directed to a smoking article with tobacco beads, teaches:
The tobacco beads optionally include binders such as microcrystalline cellulose or other cellulosic material (Abstract).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the gelling agent of Nordskog be the microcrystalline cellulose or other cellulosic material of Zhuang. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See MPEP § 2144.07.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US2017/0238607) as evidenced by Rasouli (US2015/0114405) and in view of Duc (US2019/0274350) as applied to claim 1 above, and further in view of Rasouli (US2015/0114405).
Regarding claim 8, Nordskog further discloses that the particle size of the aerogel can vary. Typically, the aerogel comprises particles (e.g., substantially spherical particles) of an average particle size range of about 0.001 μm to about 250 μm ([0022]). Nordskog does not teach wherein the median particle size D50 is between about 1 mm and about 2 mm.
Rasouli, directed to a smoking article that comprises a tobacco aerogel, teaches:
The tobacco aerogel particle may have an average size of less than about 1000 micrometers ([0042], 1000 micrometers is equivalent to 1 mm).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the aerogel medium particle size of Nordskog to be less than about 1 mm as taught by Rasouli, because both Nordskog and Rasouli are directed to aerogel particles for smoking articles, and this merely involves incorporating a known aerogel particle size (i.e. less than 1 mm) to a similar aerogel to yield predicable results. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). The range taught by the prior art overlaps the claimed range of about 1 mm to about 2 mm and is therefore considered prima facie obvious.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US2017/238607) as evidenced by Rasouli (US2015/0114405) and in view of Duc (US2019/0274350) as applied to claim 1 above, and further in view of Inoue (WO2019/111536, citations will refer to the English equivalent US2020/0297027) as evidenced by Hausner Ratio (https://www.sciencedirect.com/science/article/pii/S0378517323001199).
Regarding claim 9, Nordskog silent to the Hausner ratio and/or the tap density of the population of particles.
Inoue, directed to a filler for a smoking articles, teaches:
A filler for a smoking article, comprising a gel comprising: a gelling agent; and one or more gelation promotors, wherein the filler for a smoking article has a tap density of 0.05 g/cm.sup.3 or less and a degree of adaptability to compression filling of more than 60. ([0020]).
The filler has excellent production suitability and durability ([0012]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the population of particles of Nordskog to have a tap density of 0.05 g/cm3 or less and a degree of adaptability to compression filling of more than 60 as taught by Inoue, because both Nordskog and Inoue are directed to smoking articles that comprises fillers with gelling agents, Inoue teaches a filler with these characteristics has excellent production suitability and durability, and this merely involves incorporating a known tap density (i.e. 0.05 g/cm3) to a similar smoking article filler to yield predicable results.
As evidenced by Hausner Ratio, the Hausner ratio is the tapped density divided by the bulk density (Pg. 4, section 4.15 Hausner Ratio). Therefore, modified Nordskog would yield the population of particles to have a Hausner ratio of 0.1 or less, reading on the claim limitation a Hausner ratio of less than 1.25.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nordskog (US2017/238607) in view of Rasouli (US2015/0114405) and in view of Duc (US2019/0274350).
Regarding claim 10, Nordskog discloses:
A population of particles for use in a non-combustible aerosol provision system (aerogel that may be in the form of a plurality of particles, [0020]- [0022]).
Wherein each particle comprises (i) a gelling agent ([0027]), (ii) an absorbent, wherein the absorbent comprises silica or a silicate (wherein the aerogel may be a silica aerogel [0025], which the applicant’s specification teaches is known to be an absorbent (page 4, second paragraph)), and (iii) an aerosol-generating material (aerosol forming material, [0053]).
The particle size of the aerogel can vary. Typically, the aerogel comprises particles (e.g., substantially spherical particles) of an average particle size range of about 0.001 μm to about 250 μm ([0022]).
Nordskog does not explicitly disclose (I) the gelling agent is a binder, (II) wherein the median particle size D50 is between about 1 mm and about 2 mm, and (III) the weight ratio of absorbent to binder.
In regard to (I), Rasouli, directed to directed to a smoking article that comprises a tobacco aerogel, teaches:
Aerogels can be formed by creating a gel in solution and then carefully removing the liquid to leave the aerogel structure intact. The gel is formed by combining tobacco with a gelling agent and a liquid ([0023]).
As Rasouli teaches that the gelling agent forms the gel that leaves the aerogel structure intact (i.e. binds the structure), Rasouli teaches that gelling agents are binders. Therefore, the gelling agent as taught by Nordskog is considered to read on the claim limitation a binder.
In regard to (II), Rasouli further teaches:
The tobacco aerogel particle may have an average size of less than about 1000 micrometers ([0042], 1000 micrometers is equivalent to 1 mm).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the aerogel medium particle size of Nordskog to be less than about 1 mm as taught by Rasouli, because both Nordskog and Rasouli are directed to aerogel particles for smoking articles, and this merely involves incorporating a known aerogel particle size (i.e. less than 1 mm) to a similar aerogel to yield predicable results. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I). The range taught by the prior art overlaps the claimed range of about 1 mm to about 2 mm and is therefore considered prima facie obvious.
In regard to (III), Nordskog further teaches:
The aerogel may be coated with at least one aerosol-forming material and/or flavoring agent ([0020]). In certain embodiments, the aerogel is a silica aerogel ([0025]). Aerogels are formed by creating a gel in solution and then carefully removing the liquid to leave the aerogel structure intact. Generally, a gel is produced by combining a metal-based compound precursor, a gelling agent and a liquid ([0027]).
As such, the silica aerogel is considered to consist of silica (i.e. absorbent), a gelling agent (i.e. binder), and an aerosol-forming material and/or flavorant.
The amount of either the flavoring agent and/or aerosol-forming material in the aerogel is more often about 1 to about 20 wt. % ([0054]).
Nordskog is silent to the amount of silica and gelling agent in the silica aerogel.
Duc, directed to an aerosol-generating article that comprises an aerogel, teaches:
A silica aerogel that may comprise between about 30 percent by weight and about 40 percent by weight of synthetic amorphous silica ([0036]- [0037]).
Therefore, as Nordskog is silent to the amount of silica in the silica aerogel, it would be obvious for one having ordinary skill in the art to look to other known teachings of silica aerogels that one of ordinary skill could apply to Nordskog with a reasonable expectation of success in the silica amount being suitable for use in the silica aerogel. As such, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to incorporate to Nordskog the silica aerogel comprising between 30 and 40 wt.% of synthetic amorphous silica as taught by Duc, because both Nordskog and Duc are directed to smoking articles that comprise silica aerogel, and this merely involves incorporating a known amount of silica to a similar aerogel to yield predicable results.
The amount of gelling agent (i.e. binder) would be the remainder weight percent of the silica aerogel after taking into account the amount of silica and the flavoring and/or aerosol-forming material. Therefore, the amount of gelling agent in the silica aerosol is considered to be between 10 and 69.5 wt.%, yielding a weight ratio of absorbent to binder being about 0.43:1 to 4:1. The range taught by the prior art overlaps the claimed range of between about 1.3:1 to about 1.9:1 and is therefore prima facie obvious.
Conclusion
THIS ACTION IS MADE FINAL. 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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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755