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 Amendment
This office action is in response to Applicant’s amendment filed 8/29/2025.
Claims 1-2, 18, 20, 22-23, and 25 are amended.
Claims 5, 8-12, 15-17, 19, 21, 24, 26, 28-30, 32, and 36-41 are cancelled.
Claims 1-4, 6-7, 13-14, 18, 20, 22-23, 25, 27, 31, 33-35, and 42-43 are pending. Claims 27, 31, 33-35, and 42-43 have been withdrawn.
The Examiner withdraws the objection to claim 2 for minor informalities due to Applicant’s amendment filed 8/29/2025.
The Applicant has overcome the rejection of claims 1-4, 6-7, 13-14, 18, 20, 22-23, and 25 under 35 U.S.C. 112(b) as being indefinite by amending the claims in the reply filed 8/29/2025.
Response to Arguments
Applicant' s arguments, see page 12, filed 8/29/2025, with respect to the rejections of claims 1, 3-4, 7, 18 and 23 under 35 U.S.C. 102(a)(1) as being anticipated by Ergle; and claims 1, 13-14, 20, and 23 provisionally rejected on the ground of nonstatutory double patenting over claims 14-15 of copending U.S. Application No. 18/042861 have been fully considered and are persuasive. The Applicant has amended claim 1 to include the limitation “wherein the tobacco has an area density, and the amorphous solid has an area density, the area density of the amorphous solid being from about 90 to 110% of the area density of the tobacco material.” While such a limitation was previously presented in claim 25 dated 7/29/2022, such a limitation was not positively required due to the “and/or” claim language. The prior art of record and copending application o fails to disclose such a limitation. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of newly cited prior art.
Applicant's arguments filed 8/29/2025 regarding Ergle have been fully considered but they are not persuasive.
Applicant notes that claim 1 recites “optionally, active substance in an amount of up to about 20 wt% of the amorphous solid” (p. 12). Applicant interprets this limitation to mean that although the active substance is optional, any active substance cannot be present in more than 20 wt%. (p. 12). Applicant further argues that Sheet 5 of Example 5 in Ergle, contains 30 wt% menthol, which is more than the maximum amount allowed (p. 12).
The Examiner has noted Applicant’s argument but finds it unpersuasive for two reasons.
First, as Applicant has noted, claim 1 recites “optionally, active substance in an amount of up to about 20 wt% of the amorphous solid.” The Examiner notes that such a limitation could reasonably interpreted to have different meanings. The Examiner notes that Applicant interprets the active substance to be optional, and the Examiner agrees that Sheet 5 of Ergle would not anticipate the claim under Applicant’s interpretation. However, the Examiner has interpreted the limitation to mean that the composition as a whole may include active substances in an amount of up to about 20wt%, but does not need to include active substances in an amount of up to about 20wt%. In other words, the Examiner interprets the optionality of the claim to extend to both the active substance and the amount of the active substance. Under such an interpretation, Sheet 5 of Ergle would still anticipate the claim.
Second, even if the claim limitation is interpreted according to the Applicant, Ergle teaches, more broadly, that volatile flavorants typically comprise between about 15 to about 50% by weight of the flavor-bearing sheet ([0035]). “Disclose[d] examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” See MPEP 2123(II). Thus, Ergle’s broad disclosure, which the Examiner has also relied on, may contain volatile flavors such as menthol in the 15-20% range. Thus, Ergle’s broad disclosure would also read on the Applicant’s interpretation of the limitation.
Applicant's arguments filed 8/29/2025 regarding the nonstatutory double patenting over claims 2-15 of copending U.S. Application No. 18/04240 have been fully considered but they are not persuasive.
Applicant argues that the amended limitation “wherein the tobacco has an area density, and the amorphous solid has an area density, the area density of the amorphous solid being from about 90 to 110% of the area density of the tobacco material” in claim 1 distinguishes the claim from the claims 2-15 of the copending application (p. 13).
The Examiner respectfully disagrees because claim 10 of the copending application recites such a limitation.
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.
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 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 1-4, 6-7, 18, 20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Ergle et al. (US 2009/0038629; of record) in view of Mua (US 2006/0021626; of record) and Zuchuat et al. (US 2017/0035095).
Regarding claim 1, Ergle a smokable material composition ([0047]-[0048]; “aerosol-generating composition”) comprising:
a flavor-bearing sheet ([0026]; “amorphous solid”) in the form of a non-volatile matrix provided by a film-forming coagulating material typically comprise about 15 to about 80% by weight, more typically between 50 to about 80% by weight, and preferably between about 60 to about 80% by weight ([0033]); the film-forming coagulating material comprising:
polyols ([0027]) including glycerol ([0028]) and polymeric ethers including polyalkylene glycols such as polyethylene glycol, polypropylene glycol ([0029]) (“aerosol-former material”);
natural polymers and derivatives thereof ([0027]) including cellulose and cellulose derivatives, alginates, pectins, and guar gum ([0031]; see claim 7 of the instant application, reciting that “the gelling agent comprises alginate and/or pectin and/or guar gum;” see also the instant specification at p. 8, ll. 1-11, describing that the gelling agents include cellulose (and derivatives; “gelling agent”); and combinations thereof ([0027]; see also Claim 2); and
shredded tobacco filler ([0048]; “tobacco material”),
wherein the weight ratio of the shredded flavor-bearing sheets to the tobacco filler will typically range from about 1:100 to about 1:5 ([0050]).
In one example, Ergle discloses a flavor-bearing sheet comprising 45% propylene glycol (i.e., “aerosol-former material in an amount of from about 40 to 80wt%”) and 25% carboxymethyl cellulose (i.e., “gelling agent…wherein the amount of gelling agent and filler taken together is from about 10 to 60 wt%”) (Example 5, sheet 5).
Regarding the claim limitation “wherein the aerosol-generating composition has an aerosol-former material content from about 5 to 30 wt%,” the use of the flavor-bearing sheet 5 in Example 5, in combination with the disclosed weight ratio of 1:5 of flavor-bearing sheet to tobacco would result in an aerosol-former content of about 7.5% (1/6*45) (i.e., an aerosol-former material content from about 5 to 30wt% of the aerosol-generating composition”).
Ergle further discloses that any shredded tobacco may be used in the present invention ([0051]).
Regarding the claim limitation “wherein the tobacco material has an area density, and the amorphous solid has an area density,” one of ordinary skill in the art would appreciate that the flavor-bearing sheet and the shredded tobacco filler of Ergle would have a certain area density.
However, Ergle does not explicitly teach wherein the area density of the amorphous solid is from about 90 to 110% the area density of the tobacco material. Specifically, Ergle does not explicitly teach the area densities of the shredded tobacco filler or the flavor-bearing sheet.
Zuchuat teaches a reconstituted tobacco sheet (abstract) wherein it is desirable to provide a method in which the reconstituted tobacco sheet has an increased filling power ([0005]), wherein the basis weight (i.e., “area density”) of the reconstituted tobacco sheet is reduced to improve the filling power of the tobacco ([0022]), and wherein the reconstituted tobacco sheet has a basis weight of less than about 230 grams per square meter and preferably a basis weight of at least about 80 grams per square meter ([0021]).
Therefore, Zuchuat teaches that basis weight (i.e., “area density”) of a filler is a result-effective variable that affects the filling power of the filler.
It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to have modified the shredded tobacco in Ergle to have a basis weight of about 80-230 g/m2 as in Zuchaut because (a) such a modification involves discovering an optimum value of a result effective variable, which involves changing the basis weight of the tobacco material to obtain various amounts of filling power, involving only routine skill in the art (see MPEP 2144.05 II(B)); and (b) such a modification predictably and desirably results in increasing the filling power of the tobacco which advantageously reduces the overall tobacco weight in the smoking articles (Zuchuat; [0022]).
Moreover, Mua teaches a smokable filler material (abstract) wherein it is known that tobacco cut rag exhibits a fill value of about 6 to 7 cc/g ([0035]) and the filler of the presently claimed invention includes a fill value of 5.7 to 8.88 cc/g, which is more closely approximating what is found in tobacco cut rag ([0035]), and has a basis weight from 55 g/m2 to 100 g/m2 ([0031]).
It would have been obvious to said skilled artisan to have modified the shredded flavor-bearing sheets of Ergle to have a basis weight of 55-100 g/m2 as in Mua because (a) such a modification involves discovering an optimum value of a result effective variable, which involves changing the basis weight of the filler to obtain various amounts of filling power (see Zuchuat above), involving only routine skill in the art (see MPEP 2144.05 II(B)); and (b) such a modification predictably results in increasing the fill value of the shredded flavor-bearing sheet in order to more closely exhibit the properties exhibited by tobacco (Mua; [0006]) with the additional benefit of having improved flavor characteristics with minimal Hoffman Analyte deliveries (Mua; [0008]).
Regarding the claim limitation “the area density of the amorphous solid being from about 90 to 110% of the area density of the tobacco material,” modified Ergle discloses the shredded flavor-bearing sheet would have a basis weight of 55-100 g/m2, and the shredded tobacco filler would have a basis weight of about 80-230 g/m2. This means that the shredded flavor-bearing sheet would have an area density of 55-125% the area density of the shredded tobacco filler. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claims 2 and 6, modified Ergle discloses wherein the film-forming coagulating material typically comprise about 15 to about 80% by weight, more typically between 50 to about 80% by weight, and preferably between about 60 to about 80% by weight ([0033]); wherein the weight ratio of the shredded flavor-bearing sheets to the tobacco filler will typically range from about 1:100 to about 1:5 ([0050]). wherein the weight ratio of the shredded flavor-bearing sheets to the tobacco filler will typically range from about 1:100 to about 1:5 ([0050]).
In one example, Ergle discloses a flavor-bearing sheet comprising 45% propylene glycol (i.e., “aerosol-former material”) and 25% carboxymethyl cellulose (i.e., “gelling agent”) (Example 5, sheet 5). This means that the use of the flavor-bearing sheet 5 in Example 5, in combination with the disclosed weight ratio of 1:5 of flavor-bearing sheet to tobacco would result in an aerosol-former content of about 7.5% (1/6*45) (i.e., an aerosol-former material content from about 5 to 30wt% of the aerosol-generating composition”).
In another example, non-limiting illustration, Ergle discloses that the amount of polyethylene glycol to be present in an amount of about 70wt% ([0037]).
However, Ergle does not explicitly teach that the aerosol-former material content is from about 10 to 20wt% of aerosol-generating composition or that the aerosol-former material is comprised in the amorphous solid in an amount of from 50 to 70wt% of the amorphous solid in combination with the gelling agent being present in the amorphous solid.
Ergle further teaches that the following example (i.e., Example 5) demonstrates improvement in film quality of the flavor bearing sheet by adding propylene glycol ([0076]), and that the following example (i.e., Example 6) demonstrates the improvement in the film quality of the flavor bearing sheet of the present invention by adding glycerol in the taste quality of the cigarettes ([0079]).
Therefore, Ergle discloses that the amount of propylene glycol and glycerol are result effective variables that affect the film quality of the flavor bearing sheet.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have increase the amount of propylene glycol in the flavor bearing sheet 5 of Example 5 and/or to have added glycerol to the flavor bearing sheet 5 of Example 5 in Ergle to obtain higher quality flavor bearing sheets because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 (II)(B). Moreover, such optimization would have been within the prior art conditions because Ergle suggests that the amount of film-coagulating material including the polyols ([0027]) and/or polymeric ethers ([0029]) may be in an amount of up to 80wt%, which would mean the polyol and/or polymeric ether can be present in an amount of 13.3% when the ratio of the flavor bearing sheet to tobacco filler is 1:5 (1/6*80). See MPEP 2144.05(II)(A).
Regarding claim 3, modified Ergle discloses the weight ratio of the shredded flavor-bearing sheets to the tobacco filler will typically range from about 1:100 to about 1:5 ([0050]).
A ratio of 1:5 would mean that the flavor bearing sheet is 16.7% of the overall smokable material composition (1/6) (i.e., “about 5 to 40wt% of the aerosol-generating composition”).
Regarding claim 4, modified Ergle discloses the flavor bearing sheet 5 in Example 5 lacks a filler (see Example 5).
Regarding claim 7, modified Ergle discloses 25% carboxymethyl cellulose in the flavor bearing sheet 5 in Example 5 (Example 5; “gelling agent is comprised in the amorphous solid in an amount of from about 5 to 50wt% of the amorphous solid”).
Regarding claim 18, modified Ergle discloses the tobacco may include flue-cured, Burley, Turkish, Oriental, and expanded tobacco ([0051]; “tobacco material does not comprise reconstituted tobacco”).
Regarding claim 20, modified Ergle discloses wherein any shredded tobacco may be used with the present invention ([0051]).
However, modified Ergle is silent as to the tobacco material is cut rag tobacco.
Mua further teaches a smokeable filler material (abstract) wherein it is known that tobacco cut rag exhibits a fill value of 6 to 7 cc/g whereas prior art fillers have a fill value of 4 to 4.5 cc/g, and the low fill value of the prior art results in a heavy smoking article with a poor burn rate and smoke delivery ([0035]).
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 shredded tobacco in Ergle for cut rag tobacco as in Mua to obtain the predictable result of forming a smoking composition with the benefit of being lighter and having a higher burn rate and smoke delivery than prior art fillers having a lower fill value (Mua; [0035]).
Regarding claim 23, modified Ergle discloses the flavor-bearing sheet is shredded into a confetti cut of about 1/32” ([0048]; “shredded sheet”).
Claims 13-14 and are rejected under 35 U.S.C. 103 as being unpatentable over Ergle et al. in view of Mua and Zuchuat et al. as applied to claim 1 above, and further in view of Metzner et al. (US 5722431; of record).
Regarding claim 13, modified Ergle discloses the smokable material composition as discussed above with respect to claim 1, wherein any shredded tobacco may be used with the present invention ([0051]).
However, modified Ergle is silent as to the tobacco material is fine-cut.
Metzner teaches a method for the production of cut tobacco for smokable articles (abstract) wherein it is known in the art that tobacco leaves for smokable articles and fine-cut differ in consistency and taste perception (col. 1, ll. 10-19). Metzner solves this problem by treating the tobacco leave for cut tobacco and fine-cut (col. 2, ll. 42-52).
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 shredded tobacco in modified Ergle for the treated fine-cut tobacco as in Metzner to obtain the predictable result of forming a smoking composition with the benefit of improving the consistency and taste perception of the composition (Metzner; col. 2, ll. 42-52).
Regarding claim 14, modified Ergle discloses the fine-cut tobacco material is made from tobacco lamina material (Metzner; col. 2, ll. 53-65).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Ergle et al. in view of Mua and Zuchuat et. al. as applied to claim 1 above, and further in view of Li et al. (US 2006/0086367; of record).
Regarding claim 22, modified Ergle discloses the smokeable material composition as discussed above with respect to claim 1, wherein the tobacco may be treated with additives and the like according to conventional practice ([0051]).
However, modified Ergle is silent as to where in the tobacco material comprises an aerosol-former material in an amount of from 1 to 10wt% of the tobacco material.
Li teaches a tobacco smoking mixture (abstract) comprising tobacco and a mixture of palladium and glycerin wherein the glycerin is present in an amount of about 8 to 13% by weight of the tobacco smoking mixture ([0004]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added palladium and 8-13% glycerin as in Li to Ergle’s tobacco because in order to reduce the cytotoxicity and/or mutagenicity of the smoke produced when the tobacco smoking mixture is burned (Li; [0004]).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Ergle et al. in view of Mua and Zuchuat et al. as applied to claims 20 and 23 above, and further in view of Iwanaga et al. (US 2021/0235747; of record).
Regarding claim 25, modified Ergle discloses the smokable material composition as discussed above with respect to claims 20 and 23, wherein the tobacco material is a cut rag tobacco (Mua; [0035]), and wherein the flavor-bearing sheet is shredded into a confetti cut of about 1/32” ([0048]; “shredded sheet,” equivalent to 0.79 mm).
However, modified Ergle does not explicitly teach the cut width of the amorphous solid being about 90 to 110% of the cut width of the cut rag tobacco.
Iwanaga teaches a smoking article including a tobacco filler (abstract) wherein the tobacco filler 923) is a tobacco leaf that is cut into strips having a width of 0.8 to 1.2 mm to form cut rags ([0031]).
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 width of modified Ergle’s cut rag to be in the range of 0.8 to 1.2 mm as in Iwanaga because such a modification involve the mere change in the size of a component. A change in size/shape is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04 (IV).
Regarding the claim limitation “the cut width of the amorphous solid being about 90 to 110% of the cut width of the cut rag tobacco,” the confetti cut flavor-bearing sheet and the cut rag tobacco having a width of 0.8 mm would meet such a limitation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-7, 13-14, 20, 22-23, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-15 of copending Application No. 18/042840 (reference application).
Regarding claim 1, the copending application recites an aerosol-generating composition comprising:
tobacco material, and
an amorphous solid, the amorphous solid comprising:
(a) aerosol generating agent in an amount of from about 25 to 80 wt% of the amorphous solid;
(b) one or more gelling agents selected from cellulosic gelling agents, guar gum, acacia gum and mixtures thereof;
(c) filler in an amount of at least about 15 wt% of the amorphous solid; and
(d) optionally, active substance;
wherein the amount of gelling agent and filler taken together is from about 20 to 75 wt% of the amorphous solid,
wherein the aerosol-generating composition has an aerosol generating agent content of from about 5 to 30 wt% of the aerosol-generating composition, these weights being calculated on a dry weight basis (claim 2), and
wherein the tobacco material has an area density, and the amorphous solid has an area density, the area density of the amorphous solid being from about 90 to 110% of the area density of the tobacco material (claim 10).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims include different, but overlapping, ranges for the aerosol generating agent and gelling agent and filler, and include a more specifically claimed gelling agent that anticipates the claimed gelling agent.
Regarding claim 2, the copending application recites wherein the aerosol generating agent content is from about 10 to 20 wt% of the of the aerosol-generating composition (claim 11).
Regarding claim 3, the copending application recites wherein the amorphous solid is comprised in the aerosol-generating composition in an amount of from about 5 to 40 wt% of the aerosol-generating composition (claim 12).
Regarding claim 4, the copending application recites wherein the filler is comprised in the amorphous solid in an amount of from about 15 to about 35 wt% (claim 13), which overlaps the claimed range of 1 to 15wt%.
Regarding claim 6, the copending application recites wherein the aerosol generating agent is comprised in the amorphous solid in an amount of from about 30 to about 60 wt% (claim 14), which overlaps the claimed 50 to 70wt%.
Regarding claim 7, the copending application recites wherein the gelling agent is comprised in the amorphous solid in an amount of from about 20 to about 40 wt% (claim 15), which anticipates the claimed range of 5 to 50wt%.
Regarding claim 13, the copending application recites wherein the tobacco material is fine-cut (claim 3).
Regarding claim 14, the copending application recites wherein the tobacco material comprises lamina tobacco (claim 4).
Regarding claim 20, the copending application recites wherein the tobacco material comprises cut rag tobacco (claim 5), and wherein the cut rag tobacco is present in an amount of at least 90 wt% of the tobacco material (claim 6).
Regarding claim 22, the copending application recites wherein the tobacco material comprises aerosol generating agent in an amount of from 1 to 10 wt% of the tobacco material (claim 7).
Regarding claim 23, the copending application recites wherein the amorphous solid is a shredded sheet blended with the tobacco material (claim 8).
Regarding claim 25, the copending application recites wherein the tobacco material comprises cut rag tobacco having a cut width, and the amorphous solid shredded sheet has a cut width, the cut width of the amorphous solid being from about 90 to 110% of the cut width of the cut rag tobacco (claim 9).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 13-14, 20, and 23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-15 of copending Application No. 18/042861 (reference application) in view of Mua (US 2006/0021626; of record) and Zuchuat et al. (US 2017/0035095).
Regarding claim 1, the copending application recites: an aerosol-generating composition comprising:
tobacco material, and
an amorphous solid as defined in claim 1;
wherein the aerosol-generating composition has an aerosol generating agent content of from about 5 to 30 wt% of the aerosol-generating composition, these weights being calculated on a dry weight basis (claim 14),
wherein the amorphous solid comprises:
(a) aerosol generating agent in an amount of from about 25 to 80 wt% of the amorphous solid;
(b) one or more gelling agents selected from methyl cellulose, guar gum and mixtures thereof; and
(c) filler in an amount of at least about 15 wt% of the amorphous solid; wherein the amount of gelling agent and filler taken together is from about 20 to 75 wt% of the amorphous solid (claim 1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims include different, but overlapping, ranges for the aerosol generating agent and gelling agent and filler, and include a more specifically claimed gelling agent that anticipates the claimed gelling agent.
Regarding the claim limitation “wherein the tobacco material has an area density, and the amorphous solid has an area density,” one of ordinary skill in the art would appreciate that the amorphous solid and the tobacco material of the copending application would have a certain area density.
However, the copending application does not explicitly teach wherein the area density of the amorphous solid is from about 90 to 110% the area density of the tobacco material.
Zuchuat teaches a reconstituted tobacco sheet (abstract) wherein it is desirable to provide a method in which the reconstituted tobacco sheet has an increased filling power ([0005]), wherein the basis weight (i.e., “area density”) of the reconstituted tobacco sheet is reduced to improve the filling power of the tobacco ([0022]), and wherein the reconstituted tobacco sheet has a basis weight of less than about 230 grams per square meter and preferably a basis weight of at least about 80 grams per square meter ([0021]).
Therefore, Zuchuat teaches that basis weight (i.e., “area density”) of a filler is a result-effective variable that affects the filling power of the filler.
It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to have modified the tobacco material of the copending application to have a basis weight of about 80-230 g/m2 as in Zuchaut because (a) such a modification involves discovering an optimum value of a result effective variable, which involves changing the basis weight of the tobacco material to obtain various amounts of filling power, involving only routine skill in the art (see MPEP 2144.05 II(B)); and (b) such a modification predictably and desirably results in increasing the filling power of the tobacco which advantageously reduces the overall tobacco weight in the smoking articles (Zuchuat; [0022]).
Moreover, Mua teaches a smokable filler material (abstract) wherein it is known that tobacco cut rag exhibits a fill value of about 6 to 7 cc/g ([0035]) and the filler of the presently claimed invention includes a fill value of 5.7 to 8.88 cc/g, which is more closely approximating what is found in tobacco cut rag ([0035]), and has a basis weight from 55 g/m2 to 100 g/m2 ([0031]).
It would have been obvious to said skilled artisan to have modified the amorphous solid of the copending application to have a basis weight of 55-100 g/m2 as in Mua because (a) such a modification involves discovering an optimum value of a result effective variable, which involves changing the basis weight of the filler to obtain various amounts of filling power (see Zuchuat above), involving only routine skill in the art (see MPEP 2144.05 II(B)); and (b) such a modification predictably results in increasing the fill value of the shredded flavor-bearing sheet in order to more closely exhibit the properties exhibited by tobacco (Mua; [0006]) with the additional benefit of having improved flavor characteristics with minimal Hoffman Analyte deliveries (Mua; [0008]).
Regarding the claim limitation “the area density of the amorphous solid being from about 90 to 110% of the area density of the tobacco material,” the modified copending application discloses the amorphous solid would have a basis weight of 55-100 g/m2, and the tobacco material would have a basis weight of about 80-230 g/m2. This means that the amorphous solid would have an area density of 55-125% the area density of the tobacco material. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 13, the copending application recites wherein the tobacco material is fine-cut (claim 15).
Regarding claim 14, the copending application recites wherein the tobacco material comprises lamina tobacco (claim 15).
Regarding claim 20, the copending application recites wherein the tobacco material comprises cut rag tobacco (claim 15).
Regarding claim 23, the copending application recites wherein the amorphous solid is a shredded sheet blended with the tobacco material (claim 15).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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, Philip Y Louie can be reached at (571) 270-1241. 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.
/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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