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
This office action is in response to Applicant’s amendment filed on 24 February 2026:
Claims 15-29 are pending
Claims 1-14 are cancelled
Claim 15 is amended
Claim 29 is new
Response to Amendment
Applicant's amendments to the claims filed 24 February 2026 have been acknowledged.
It is noted that Claim 15 has been amended to once again recite that the aerosol-forming substrate comprises “at least one of an alkaloid compound and a cannabinoid compound”, which was originally presented in the claims filed 27 September 2022. Though the recitation only requires one of the compounds, it is further noted that both compounds have already been addressed in Examiner’s prior Office Actions.
Response to Arguments
Applicant's arguments filed 24 February 2026 have been fully considered but they are not persuasive.
On Page 6-8 of Applicant’s Remarks, Applicant argues that Emmett’s disclosure would not be applicable to Thorens because the latter teaches a liquid substrate wherein piercing the capsule that contains the liquid substrate in a manner similar to what Emmett’s disclosure, would not lead to the recess extending through the liquid substrate because it would fill the recess. As such, applying Emmett to Thorens would not arrive to Feature C. Applicant also states that Kabirat does not teach this feature.
Examiner respectfully disagrees as the liquid substrate will not fill the recess disclosed in Thorens because the recess is formed by the liquid retention medium 210a which will absorb the liquid substrate from the capsule once pierced [0286]. Once the retention medium absorbs the liquid substrate, said substrate will maintain the recess as it now conforms to the retention medium it is now contained in and thus, will maintain the cavity to enable the recess to extend through the liquid retained substrate medium. Examiner also notes that Kabirat was not used to teach the feature of the recess and therefore, the argument is moot.
On Pages 7-8 of Applicant’s Remarks, Applicant argues that providing a wrapper between the substrate and the recess in Thorens as disclosed by Rushforth would render the modified unusable because it would physically block the release of the aerosol from the capsule. No further explanation or details were provided on how it would physically block aerosol release.
Examiner assumes that when Applicant states that the wrapper would physically block the substrate from releasing aerosol, Applicant may be referring to how Thorens capsule is meant to be pierced, such that the liquid is absorbed by the liquid retention medium 210a which forms the recess. As such, disposing a wrapper between the medium and capsule would create a physical barrier that blocks liquid retention.
However, it should be noted that Rushforth discloses that the wrapper can be made of materials that can be permeable to liquid. For example, Rushforth notes that the wrapper can be a paper material such as reconstituted tobacco or alternatively cellulosic materials [0041]. Thoren’s liquid retention medium is an absorbent material that can also be made of cellulosic material [0118], similar to what Rushforth discloses for the wrapper. Therefore, one ordinarily skilled in the art would reasonably conclude that if Rushforth’s wrapper was utilized, it would be permeable to the liquid substrate and allow it to transfer to the retention medium for aerosolizing.
Alternatively, Examiner also notes that if Applicant is stating that incorporating Rushforth’s wrapper would mean completely wrapping the capsule in the wrapper such that said capsule is not accessible to the heating element to be pierced, Examiner respectfully disagrees with this assumption. Rushforth’s wrapper is disposed on the inner sides of its article such that it forms an open cavity for the insertion of an inner substrate component. Therefore, if a similar arrangement is applied to the inner sides of the recess formed by the liquid retention medium such that it will be disposed between the recess and liquid substrate capsule, there should be an opening similar to that disclosed in Rushforth, allowing for a heating element to have access to the liquid capsule to be pierced.
Further alternatively, Examiner also further notes that while Applicant argues the impracticality of implementing Rushforth’s wrapper due to the liquid capsule, the liquid capsule disclosed by Thoren’s is not a mandatory component of Thoren’s overall article. In fact, Thorens notes that the aerosol-forming substrate can be a solid, a liquid, or both a solid and liquid element [0112]. Therefore, the liquid component capsule component may be replaced with a solid component and therefore not suffer from the same limitations as the liquid capsule which the Applicant contests with.
The following is a modified rejection based on amendments to the claims.
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 15-25 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Thorens (Publication No. US20180007972A1), in view of Kabirat et al (Publication No. US20210289830A1), Emmett et al (Publication No. WO2015193498A1, cited in IDS dated 27 September 2022) and Rushforth et al (Publication No. US20210120866A1).
Regarding Claim 15, Thorens discloses an aerosol-generating article for producing an inhalable aerosol upon heating, the aerosol-generating article comprising:
an aerosol-forming substrate comprising a gel composition [0189];
the gel composition comprising:
a gelling agent ([0213-0214]; aerosol-forming substrate comprises a capsule made of gelatin as the gelling agent);
an aerosol former [0219];
an alkaloid compound ([0219]; Nicotine is an alkaloid compound);
and an upstream element (Porous body 510) upstream of the aerosol-forming substrate (Fig. 4; [0054], [0312]; Porous body is located on the distal/upstream end);
and a recess extending from an upstream end of the aerosol-generating article, through the upstream element to receive a heating element (Fig. 4; [0093]).
Thorens further discloses a recess (Lumen 414) through the aerosol-forming substrate (Aerosol-generating article 400) (Figs. 2, 4; [0284-0285], [0312]; Components in Fig. 4 are equivalent to their counterparts described in Figs. 1, 2a-2e, and 3). Thorens also discloses that the aerosol-forming substrate may include plant extracts [0220].
Thorens does not disclose the following:
the gel composition comprising a cannabinoid compound;
the recess extends through both the upstream element and the aerosol-forming substrate;
and a longitudinal inner surface of the recess is provided with a wrapper; and
wherein the wrapper is disposed between the aerosol-forming substrate and the recess.
Regarding (I), Kabirat, directed to an aerosol-forming substrate, discloses said substrate comprises an amorphous solid (i.e., gel) composition [0047]. The amorphous solid gel composition further comprises a gelling agent and an active substance [0047-0050], wherein the active substance can be a cannabinoid compound derived and/or extracted from a plant/botanical such as cannabis [0055, 0162, 0164].
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to take the plant extract in the aerosol-forming substrate disclosed by Thorens and have it specifically be a cannabis plant extract comprising cannabinoid compounds as disclosed by Kabirat, as both are directed to a gel aerosol-generating substrate comprising plant extracts, where Kabirat teaches that cannabinoids is an active substance that can be utilized in an aerosol-generating substrate to provide and/or enhance a physiological response from the user [0159].
Regarding (II), Emmett, directed to an aerosol-generating article, discloses a downstream segment (14) comprising a hollow portion (18) (i.e., recess) that extends through the airflow channel (28) (i.e., substrate recess), such that a piercing member can be received and flavorant from the liquid capsule (20) (i.e., gel composition) can be delivered from the upstream to downstream segment to the user (Fig. 1; Pg. 9, Lines 1-15).
It should be noted that while Emmet defines the piercing-receiving end as the downstream end, it is functionally equivalent to the upstream element defined by Thorens as both components serve to receive a piercing member such as a heating blade as disclosed by Thorens (see Fig. 3; Heater blade inserted into the porous material/upstream element) via a hollow portion/cavity.
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the upstream element disclosed by Thorens to have a recess/hollow portion that is open and extends through the aerosol-forming substrate as disclosed by Emmett, as both are directed to a an aerosol-generating article, where Emmett teaches the advantage of having the recess extend through the upstream and substrate elements so that the flavorant from the capsule flows from one end to the other end to reach the user (Emmett, Pg. 9, Lines 14-16); this also involves applying a known technique/teaching to a similar device to yield predictable results.
Regarding (III-IV), Rushforth, directed to a smokeable tobacco product (i.e., aerosol-generating article), discloses a first rod (22) of smokeable material (i.e., aerosol-generating substrate) with a hollow channel (8) (i.e., recess) and a tubular element (12) (i.e., wrapper) made of a suitable rigid material such as paper which is located on the inside surface of the hollow chamber to prevent the rod and hollow channel from deforming and collapsing during transport (Fig. 2; [0039-0042]; Hollow channel is disposed in a longitudinal direction; the walls of the hollow channel is formed by the smokeable substrate and therefore it is implied that the tubular element wrapper is between the substrate and channel/recess).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the recess disclosed by modified Thorens to have a wrapper (i.e., tubular element) provided on the inner surface of the recess as disclosed by Rushforth, as both are directed to a an aerosol-generating article, where Rushforth teaches the advantage of having a wrapper/tubular element provided in the recess to prevent the recess from deforming and collapsing during transport (Rushforth, [0039-0042]); this also involves applying a known technique/teaching to a similar device to yield predictable results.
Regarding Claim 16, Thorens further discloses the upstream element (Porous Body 110) comprises an annular plug comprising fibrous filtration material (i.e., bundle of fibers) (Fig. 1; [0066], [0145]; Annular shape is implied as the aerosol-generating article is cylindrical).
Regarding Claim 17, Thorens further discloses wherein a resistance-to-draw (RTD) of the upstream element (i.e., porous body) is at least 20 mmH20 ([0080]; disclosed range is 10 to 100 mmH2O which meets the requirement of having an RTD of at least 20 mmH20).
Regarding Claim 18, Thorens further discloses wherein the aerosol-forming substrate and the upstream element is circumscribed by another wrapper (Fig. 4; [0312]; Outer wrapper 440).
Regarding Claim 19, Modified Thorens does not disclose another wrapper is formed from the same piece of material as the wrapper provided on the inner surface of the recess.
However, it should be noted that constructing parts to be integral does not differentiate the claimed invention from the prior art unless the need of the integral construction shows insight that is contrary to the understandings and expectations of the art (see MPEP § 2144.04.V.B).
Modified Thorens discloses the outer wrapper (440) is a porous material such as a cigarette paper (Thorens, [0294]), while another wrapper is disclosed to be any suitable paper such as paper that typically circumscribes a cigarette (i.e., cigarette paper) (Rushforth, [0042]). As such, both disclosed wrappers can be constructed from the same type of material such as a typical cigarette paper, with the expectation that another wrapper provided to the inner surface of the recess will help prevent the recess/channel from collapsing during storage and transport (Rushforth, [0039]).
Therefore, it would have been prima facie obvious for one ordinarily skilled in the art to make the wrapper and another wrapper constructed from the same piece of material (i.e., make integral) with the expected result that another wrapper will reinforce the recess and prevent it from collapsing during storage and transport (Rushforth, [0039]).
Regarding Claim 20, Modified Thorens further discloses a downstream end of the recess (Thorens, see annotated Fig. 3 below).
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Modified Thorens does not explicitly disclose the downstream end of the recess being defined by another wrapper.
However, it should be noted that Rushforth discloses that another wrapper (Tubular element 12) is located around the periphery of the hollow channel (8) (see Fig. 2; [0040]) which is shown to have a terminal end surface opposite of the channel opening (see annotated Fig. 3b below).
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The end surface can be considered a periphery of the hollow channel and therefore would have the tubular element disposed around said end surface, with the expectation that the tubular element will reinforce the recess and prevent it from collapsing during storage and transport (Rushforth, [0039]).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to modify the recess disclosed by modified Thorens to have another wrapper (i.e., tubular element) provided on the inner surface of the recess downstream end as disclosed by Rushforth, as both are directed to an aerosol-generating article, where Rushforth teaches the advantage of having a wrapper/tubular element provided in the recess to prevent the recess from deforming and collapsing during transport (Rushforth, [0039-0042]); this also involves applying a known teaching to a similar device to yield predictable results.
Regarding Claim 21, Modified Thorens further discloses another wrapper defining the downstream end of the recess is formed from a same piece of material as the wrapper provided on the longitudinal inner surface of the recess (Rushforth, [0040]; same material construction is implied as it is a singular tubular element).
Regarding Claim 22, Thorens further discloses a downstream end of the recess is defined by a downstream element (Figs. 2a, 4; [0289]; Aerosol-cooling element 222a/422) the downstream element comprising a plug (i.e., gathered crimped sheet) of material [0291].
Regarding Claim 23, Thorens further discloses a mouthpiece assembly (230a) downstream of the aerosol-forming substrate (Fig. 2a; [0291], [0293]; Mouthpiece is downstream of the cooling section 220a which is subsequently downstream of the aerosol-forming substrate/section 210a/216a).
Regarding Claim 24, Thorens further discloses the mouthpiece assembly (230a) is spaced apart from the aerosol-forming substrate (Fig. 2a; [0291], [0293]; Mouthpiece is spaced apart from the substrate 210a/216a by the aerosol-cooling section 220a/222a).
Regarding Claim 25, Thorens further discloses an upstream end of the mouthpiece assembly is between 1mm and 20mm from a downstream end of the aerosol-forming substrate ([0289]; the mouthpiece is separated from the substrate by the cooling section which has a length of 18cm, equivalent to the distance from the mouthpiece upstream end to the substrate downstream end and within the disclosed 1-20mm range).
Regarding Claim 29, Modified Thorens does not explicitly disclose the wrapper is disposed between the upstream element and the recess. However, it should be noted that the Thorens was modified to incorporate Rushforth’s wrapper which is explicitly disclosed to be located around the periphery of a hollow channel (i.e., recess) for the purposes of making the channel/recess more resilient against deformation during transportation or use (Rushforth, [0039]).
Therefore, based on Rushforth’s disclosure, one ordinarily skilled in the art would find motivation in applying the same wrapper between the upstream element and the recess, since both elements form a hollow channel/recess that can predictably yield the same benefits of having an improved and more resilient structure against deformation as noted for the recess formed by the substrate and recess since they are both similarly structure recesses/hollow channels.
Claims 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Thorens (Publication No. US20180007972A1), in view of Kabirat et al (Publication No. US20210289830A1), Emmett et al (Publication No. WO2015193498A1, cited in IDS dated 27 September 2022) and Rushforth et al (Publication No. US20210120866A1) as applied to Claim 23 above, and further in view of Ito et al (Publication No. US20180000152A1).
Regarding Claim 26, Thorens further discloses a mouthpiece at the outlet end of the aerosol-generating article which may also include a filter [0204]. Thorens does not disclose a ventilation zone configured to allow air to enter the aerosol-generating article.
However, Ito, directed to a filter (i.e., mouthpiece assembly) for a cigarette product (i.e., aerosol-generating article), discloses the filter further comprising a front-stage filter material (41), cavity unit (42), and mouthpiece end (43) wherein a ventilation zone (air holes 31) are provided on the front-stage filter material so that surrounding air can be introduced into the filter/mouthpiece assembly and dilute components in the mainstream smoke such as tar, CO, and nicotine (Figs. 1-2; [0051], [0057], [0059]).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to substitute the mouthpiece disclosed by Thorens with the filter/mouthpiece assembly disclosed by Ito, as both are directed to a an aerosol-generating article/cigarette product, where Ito teaches the advantage of having a ventilation zone provided on the front-stage filter portion so that surrounding air can be introduced into the filter/mouthpiece assembly and dilute components in the mainstream smoke such as tar, CO, and nicotine (Ito, [0057], [0059]); this also involves substitution of one known mouthpiece assembly with another known mouthpiece assembly to a similar device to yield predictable results.
Regarding Claim 27, Modified Thorens further discloses the at least one ventilation zone (Air holes 31) is disposed about the mouthpiece assembly (Figs. 1-2; [0057]; Filter 4 and its sub-components is the mouthpiece assembly)
Regarding Claim 28, Modified Thorens further discloses the at least one ventilation zone is disposed about an upstream end of the mouthpiece assembly (Figs. 1-2; [0057]; Filter 4 is the mouthpiece assembly wherein the front-stage material 41 is considered the upstream end of the assembly).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Davis et al (Publication No. US20210307383A1) – Consumable for use with an aerosol generating device, said consumable comprises an inner member of aerosolisable material that forms into a hollow tube. Said inner member has an inner layer which disposed between the tube’s hollow passage and aerosolisable material, wherein said inner layer can be paper, tobacco material, or plastics.
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 Vu P Pham whose telephone number is (703)756-4515. The examiner can normally be reached M-Th (7:30AM-4:00PM EST).
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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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