DETAILED ACTION
Notice of Pre-AIA or AIA Status
In view of the Appeal Brief filed on 05/14/2026, PROSECUTION IS HEREBY REOPENED. A new group of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
Status of the Claims
This Office Action is in response to Applicant’s appeal brief filed 05/14/2026.
Claims 19, 11-22 are pending and are subject to this Office Action.
Claim 10 is previously cancelled.
Claims 11-20 are previously withdrawn.
Response to Arguments
Applicant’s arguments, see appeal brief pages 2-11, filed 06/08/2026, with respect to the 103 rejection of claim 1 have been fully considered and they are persuasive. The Applicant argues that there is insufficient motivation to combine prior art references Aoun and Mua to achieve the claimed binder content and extrusion conditions, as they are directed to products with different compositions for different uses. The Examiner agrees and therefore the rejection is withdrawn. However, upon further consideration, a new ground of rejection is made over Aoun in further view of Ghanouni et al. (WO 2020025701 A1) and Franke et al. (US 20200163377 A1).
The following is a modified rejection.
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 1-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun et al. (US 20180279666 A1) in view of Ghanouni et al. (WO 2020025701 A1; hereinafter referring to corresponding US document US 20210315259 A1) and Franke et al. (US 20200163377 A1).
Regarding claim 1, Aoun teaches a method for providing a composition with a releasable entrapment of one or more components, comprising:
Mixing the one or more components and a base material in water to give a mixture ([0081-0082]), wherein the base material comprises one or more gelling agents and/or binders ([0049]);
Extruding the mixture to form an extruded shape ([0081]);
removing at least a portion of the water from the extruded shape to give a component-containing extruded structure ([0081] teaches drying, which is removing water);
and incorporating the component-containing extruded structure as a substrate within a consumable portion of a non-combustible aerosol delivery device ([0070], [0073]).
Aoun does not explicitly teach (I) an extrusion temperature or specific extrusion method or (II) that the component-containing extruded structure comprises greater than 10% of the one or more gelling agents and/or binders.
Regarding (I), Franke, directed to a method for providing a composition with releasable entrapment of one or more components ([0042]), comprising: mixing the one or more components and a base material in water in order to give a mixture ([0081-0082], [0095]), wherein the base material comprises one or more gelling agents and/or binders ([0068]); extruding the mixture to form an extruded shape ([0091-0092]); and incorporating the component-containing extruded structure as a substrate within a consumable portion of a non-combustible aerosol delivery device ([0114]), teaches that extrusion occurs at a temperature of about 25C to about 150C through a die to form an extruded shape ([0091-0092] teaches 40C to 150C. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Aoun by performing extrusion at about 25C to about 150C through a die as taught by Franke because both Aoun and Franke are directed to methods for providing an extruded composition, Aoun is silent as to the extrusion temperature and method, one with ordinary skill would be motivated to look to prior art for known and suitable extrusion conditions, and this involves applying a known teaching to a similar method to yield predictable results.
Regarding (II), Ghanouni, directed to a method for providing a composition with releasable entrapment of one or more components (aerosol generating substrate comprising aerosol generating material; [0024], [0039]), comprising mixing the one or more components and a base material in water in order to give a mixture ([0157]; step (a)), wherein the base material comprises one or more gelling agents and/or binders ([0024-0025]); extruding the mixture to form an extruded shape ([0157-0158]; step (b)); removing at least a portion of the water from the extruded shape to give a component-containing extruded structure ([0157]; step (d)); and incorporating the component-containing extruded structure as a substrate within a consumable portion of a non-combustible aerosol delivery device ([0093]); teaches that the component-containing extruded structure comprises greater than 10% of the one or more gelling agents and/or binders ([0024-0025] teaches 1-60 wt % gelling agent. The claimed range of greater than 10% overlaps the range taught by the prior art and is therefore prima facie obvious).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Aoun by making the component-containing extruded structure comprise greater than 10% of the one or more gelling agents and/or binders as taught by Ghanouni because both Aoun and Ghanouni are directed to methods for providing compositions with releasable entrapments comprising a gelling agent/binder, Ghanouni teaches that it is known in the art that a component-containing extruded structure may comprise up greater than 10% of a gelling agent and/or binder, and this involves applying a known teaching of a suitable amount of gelling agents and/or binders to a similar product with reasonable expectation of success.
Regarding claim 2, Aoun teaches that the one or more gelling agents and/or binders are selected from the group consisting of starches, gums, zein, carrageenan, cellulose derivatives and combinations thereof ([0049-0050]).
Regarding claim 3, Aoun teaches that the one or more components are selected from the group consisting of flavorants ([0060-0061]).
Regarding claim 4, Aoun teaches that the one or more components comprise a plant extract ([0027] teaches tobacco extract).
Regarding claim 5, Aoun teaches that the one or more components comprise an active ingredient, consisting of a nicotine component ([0027], [0064] teach tobacco, wherein tobacco contains nicotine).
Regarding claim 6, Aoun teaches that the active ingredient is selected from the group consisting of citrus ([0061]).
Regarding claim 7, Aoun teaches that the one or more components comprise an aerosol forming agent consisting of a polyhydric alcohol ([0045-0046]).
Regarding claim 8, Aoun teaches that the aerosol forming agent is selected from the group consisting of glycerol ([0046]).
Regarding claim 9, Aoun teaches that the one or more components comprise a flavorant ([0060-0061]).
Regarding claim 22, Ghanouni teaches that the one or more gelling agents and/or binders are included in an amount of greater than 20% ([0024-0025] teaches 1-60 wt % gelling agent. The claimed range of greater than 20% overlaps the range taught by the prior art and is therefore prima facie obvious).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Aoun, Ghanouni and Franke as applied to claim 1 above, and further in view of Williams (US 20210204593 A1).
Regarding claim 21, Aoun teaches that the component-containing extruded structure comprises tobacco extract as an aerosol generating material ([0031]).
Aoun does not teach that the component-containing extruded structure comprises less than 1% by weight of tobacco.
Williams, directed to a composition (substrate material) with a releasable entrapment of one or more components ([0057]) comprising water and one or more gelling agents and/or binders ([0061]) extruded to form a component-containing extruded structure ([0046]) that may be incorporated within a consumable portion of a non-combustible aerosol delivery device ([0010], [0078], [0082-0083]), teaches that non-tobacco plant sources may be used instead of tobacco extract ([0046],[0066]) to form an aerosol precursor extract ([0071]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Aoun by substituting tobacco extract for a non-tobacco aerosol generating component as taught by Williams because both Aoun and Williams are directed to component-containing extruded structures comprising an aerosol generating material, Williams teaches that non-tobacco products may be used in place of a tobacco extract, and this involves simple substitution of one known element for another to obtain predictable results. This would constitute a structure that comprises less than 1% by weight of tobacco.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights