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 Arguments
Applicant’s arguments, in the “Remarks” filed on April 21, 2026, with respect to the rejection of the majority of the claims under 35 USC 102 over Arndt et al have been fully considered and are persuasive, but only as it pertains to the statutory basis upon which the claims were rejected. A typographical error resulted in claims 1-4 and 6-20 being rejected under 35 USC 102(a)(1) instead of 35 USC 102(a)(2) which would have permitted the Arndt et al reference to properly qualify as prior art based on the filing date of its PCT priority application (October 8, 2019) - not its publication date (November 11, 2021) as asserted by Applicant. Note that the PCT application designated the US and, hence, the filing date of this application can be used as the prior art date of Arndt et al. The rejection in the previous Office Action has been withdrawn, however, because upon further consideration it is believed that a stronger rejection may be made over Arndt et al as follows:
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Arndt et al (US. Pat. App. Pub. 2021/0345659).
Regarding independent claim 1, and dependent claims 7 and 12, Arndt et al discloses an aerosol-generating article (read: heat-not-burn article) which comprises an aerosol-generating substrate (1020) (read: inner core). The substrate may comprise one or more sheets of homogenized plant material in the form of one or more gathered sheets. Arndt et al clearly teaches that the term "gathered" means that the sheet(s) of homogenized plant material is "compressed" into the form of a plug or rod (read: compressed rod). It further teaches that the homogenized plant material may comprise up to 92 percent weight of Cannabis particles (read: cannabis-based material) on a dry weight bases (see abstract, paras. [0094], [0137]) (corresponding to the claimed "[a] heat-not-burn article comprising: an inner core comprising at least one compressed rod of cannabis-based material"; and the "wherein the heat-not-burn article has a total cannabis content of at least about 90%" recitation of claim 12).
Arndt et al further discloses that the sheet(s) of homogenized plant
material may then be circumscribed with a wrapper (1060) to form a continuous rod or plug. The wrapper may be a paper wrapper, but it may also be a non-paper wrapper such as a sheet of homogenized tobacco material (read: plant-based material) (see para. [0140]). While Arndt et al fails to explicitly disclose that the non-paper wrapper sheet may be comprised of reconstituted cannabis material, in lieu of homogenized tobacco material, it would have been obvious to one having ordinary skill in the art as of the effective filing date to substitute the homogenized tobacco based sheet material of the Arndt et al with reconstituted cannabis-based material based on the structural and functional analogies between tobacco and cannabis in the tobacco aerosolization arts, as one of ordinary skill would recognize that both materials, tobacco and cannabis, contain volatile, active organic compounds (nicotine in tobacco, and cannabinoids/terpenes in cannabis) that volatilize at similar temperatures without requiring combustion. Further, the use of reconstituted plant sheets to wrap smoking article rods is an old and well-known manufacturing technique utilized to control burn/heating rates, manage physical integrity, and efficiently use plant by-products. Hence, applying the known structural delivery manner of Arndt et al to an analogous, known vaporizable plant material (cannabis) is merely a simple substitution of one known active plant material for another to achieve the completely predictable result of a cannabis-based heat-not-burn aerosol (corresponding to the claimed "wherein the sheet of plant-based material comprises reconstituted cannabis material; and the "wherein the inner core is substantially encased in the outer sheath" recitation of claim 7).
Regarding claim 2, Arndt et al states that its aerosol-generating substrate, in the form of a compressed homogenized plant sheet material may be produced by dough reconstitution (see para. [0167], [0188] - which means that the cannabis-based aerosol-generating substrate sheet material would comprise “reconstituted cannabis material” (corresponding to the claimed wherein the cannabis-based material comprises reconstituted cannabis material”).
Regarding claim 3, Arndt et al discloses that its aerosol-forming substrate sheet may be cut into strips to form the compressed rod (see para. [0124],[0190]) (corresponding to the claimed “wherein the reconstituted cannabis material is in the form of a plurality of strips of a reconstituted cannabis sheet”).
Regarding claim 4, Arndt et al discloses that its cannabis content is based in a dry weight basis, which indicates that the cannabis plant material is, in fact, dry (i.e., dried) (corresponding to the claimed “wherein the cannabis-based material comprises dried cannabis plant matter”).
Regarding claim 8, since Arndt et al discloses that its sheet(s) of homogenized plant material is “circumscribed” with the wrapper, and further indicates, as seen in Fig. 1, the wrapper (1060) enables the coaxial alignment of the aerosol-generating substrate (1020) with the other article elements (1030,1040) (see para. [0251]). This indicates that the wrapper, in essence, forms a “receptable” in which the compressed/gathered sheet (read: rod) is “sealed within” (corresponding to the claimed “wherein the sheet of plant-based material is formed into a receptacle and the at least one rod is sealed within the receptacle”).
Regarding claim 9, Arndt et al discloses that its aerosol-generating substrate/sheet (read: cannabis-based material) may include additives (see para. [0253]) (corresponding to the claimed “wherein the cannabis-based material comprises at least one additive”).
Regarding claims 10-11, Arndt et al discloses that its aerosol-generating substate/sheet may include at least 1 microgram of beta-caryophyllene per gram of aerosol-generating substrate, on a dry weight basis (see abstract) (corresponding to the “wherein the at least one additive comprises at least one of…a terpene” recitation of claim 10; and the “wherein the terpene comprises …beta-caryophyllene” recitation of claim 11).
Regarding claim 13, Arndt et al discloses its aerosol-generating article (1000) which comprises, in addition to the aerosol-generating substrate (1020) (read: a first rod), an additional hollow cellulose acetate tube (1030), a spacer element (1040) and a mouthpiece filter (1050) (read: second rod) - each of which elements are clearly axially aligned with and abutting one another (read: end-to-end formation) (see Fig. 1, para. [0251]) (corresponding to the claimed “wherein the at least one rod comprises a first rod and a second rod, the first rod and the second rod being approximately axially aligned in an end-to-end formation”).
Regarding claim 14, as disclosed above, the aerosol-generating article (1020) (read: a first rod) may be comprised of cannabis material (read: a first chemical composition), and Arndt et al discloses that its hollow tube (1030) (read: a second rod) may be comprised of cellulose acetate (read: a second chemical composition”) (corresponding to the claimed “wherein the first rod comprises a first chemical composition and the second rod comprises a second chemical composition, the first chemical composition being different from the second chemical composition”).
Regarding claim 15, that which is circumscribed by the wrapper (1060) (read: inner core) includes the hollow tube (1030) which lies in an end-to-end relationship with the aerosol-generating substrate (1020) (read: rod). Since the hollow tube (1030) is made out of cellulose acetate (a filtering material), it may be properly asserted that the hollow tube (1030) serves as a “filter” (corresponding to the claimed “wherein the inner core further comprises a filter, the filter and the at least one rod being approximately axially aligned in an end-to-end formation”).
Regarding claim 16, Arndt et al discloses that a heating element may be inserted into the aerosol-generating substrate (1020) (see para. [0194]). This infers that there is inherently a “recess” to receive such a heating element at an end of the aerosol-generating substrate (1020) (corresponding to the claimed “wherein each rod of the at least one rod has a first end and a second end and wherein at least one of the first end and the second end defined a recess to receive a heating element of a heat-not-burn device therein”).
Regarding independent claim 17, and dependent claim 20, as stated above, Arndt et al discloses an aerosol-generating article and, inherently, discloses a method of making the same in that Arndt et al teaches an aerosol-generating article (read: heat-not-burn article) which comprises an aerosol-generating substrate (1020) (read: inner core). The substrate may comprise one or more sheets of homogenized plant material in the form of one or more gathered sheets. Arndt et al clearly teaches that the term “gathered” means that the sheet(s) of homogenized plant material is “compressed” into the form of a plug or rod (read: compressed rod). It further teaches that the homogenized plant material may comprise up to 92 percent weight of Cannabis particles (read: cannabis-based material) on a dry weight bases (see abstract, paras. [0094],[0137]) (corresponding to the claimed “[a] method for making heat-not-burn article, the method comprising: providing at least one compressed rod comprising cannabis-based material”).
Arndt et al further discloses that the sheet(s) of homogenized plant material may then be circumscribed with a wrapper (1060) to form a continuous rod or plug. The wrapper may be a paper wrapper, but it may also be a non-paper wrapper such as a sheet of homogenized tobacco material (read: plant-based material) (see para. [0140]). While Arndt et al fails to explicitly disclose that the non-paper wrapper sheet may be comprised of reconstituted cannabis material, in lieu of homogenized tobacco material, it would have been obvious to one having ordinary skill in the art as of the effective filing date to substitute the homogenized tobacco based sheet material of the Arndt et al with reconstituted cannabis-based material based on the structural and functional analogies between tobacco and cannabis in the tobacco aerosolization arts, as one of ordinary skill would recognize that both materials, tobacco and cannabis, contain volatile, active organic compounds (nicotine in tobacco, and cannabinoids/terpenes in cannabis) that volatilize at similar temperatures without requiring combustion. Further, the use of reconstituted plant sheets to wrap smoking article rods is an old and well-known manufacturing technique utilized to control burn/heating rates, manage physical integrity, and efficiently use plant by-products. Hence, applying the known structural delivery manner of Arndt et al to an analogous, known vaporizable plant material (cannabis) is merely a simple substitution of one known active plant material for another to achieve the completely predictable result of a cannabis-based heat-not-burn aerosol (providing a sheet comprising plant-based material, wherein the sheet of plant-based material comprises reconstituted cannabis material; and wrapping the at least one rod in the sheet”; and the “wherein wrapping the at least one rod in the sheet comprises substantially encasing the at least one rod in the sheet” recitation of claim 20).
Regarding claim 18, Arndt et al states that its aerosol-generating substrate, in the form of a compressed homogenized plant sheet material may be produced by dough reconstitution (see para. [0167], [0188] - which means that the cannabis-based aerosol-generating substrate sheet material would comprise “reconstituted cannabis material”. Further, Arndt et al discloses that its aerosol-forming substrate sheet may be cut into strips to form the compressed rod (see para. [0124],[0190]) (corresponding to the claimed “wherein providing the at least one rod comprises: providing reconstituted cannabis material; shredding the reconstituted cannabis material into a plurality of strips; and compressing the plurality of strips to form the at least one rod”).
Regarding claim 19, Arndt et al discloses that its aerosol-generating substrate/sheet (read: reconstituted cannabis-based material) may include additives (see para. [0253]) (corresponding to the claimed “wherein providing the reconstituted cannabis material further comprises infusing the reconstituted cannabis material with at least one additive”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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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.
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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
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