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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 8-15, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mua (US 2006/0021626).
Claims 1-3, 6, and 9-10. Mua discloses a smokable tobacco substitute filler (substrate) comprising a cellulose containing material, a humectant, a tobacco containing material which may be a tobacco extract, an inert material, and a binder ([0005]). The cellulose containing material is derived from wood, cotton, or flax ([0016]) (wherein flax pulp or cotton are free of sulfur compounds). The filler comprises chalk (calcium carbonate) (Tables 1-4). Suitable binder materials include alginates, gums, carrageenans, starches ([0025]).
Claims 4 and 5. Mua discloses that the smokable tobacco substitute filler (substrate) may comprise sodium carboxymethyl cellulose (cellulose ether) ([0021]; [0025]).
Claim 8. Mua teaches that the smokable tobacco substitute filler (substrate) may comprise no wood pulp (see Tables 1-4).
Claims 11-13. Mua discloses that the humectant included in the smokable tobacco substitute filler (substrate) is glycerol ([0021]; Tables 1-4).
Claims 14 and 15. Mua discloses that the smokable tobacco substitute filler (substrate) comprises flavorants which may include tobacco or tobacco extract ([0028]).
Claims 17 and 18. Mua discloses that the smokable tobacco substitute filler (substrate) is cast into sheets ([0013]) which can be cut into strips and formed into a smoking article ([0018]).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Mua (US 2006/0021626).
Claim 16. Mua discloses the aerosol generating component of claim 1 comprising glycerin (aerosol forming material) in amounts ranging from 12-13% (Tables 1-4) but does not disclose glycerin in an amount ranging from about 15 to about 55% by weight based on a total weight of the impregnated substrate. However, differences in concentration generally will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical (See MPEP §2144.05(II)(A)). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date that glycerin (aerosol forming material) may be included in a greater amount, such as in an amount ranging from about 15 to about 55% by weight based on a total weight of the impregnated substrate.
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Mua (US 2006/0021626) in view of Shannon (US 4928714).
Claims 19-21. Mua discloses a smokable tobacco substitute filler (substrate) which can be formed into a smoking article ([0018]), but does not explicitly disclose an aerosol delivery device comprising the smokable tobacco substitute filler (substrate), a heat source, and an aerosol pathway extending from the smokable tobacco substitute filler (substrate) to a mouth-end of the aerosol delivery device.
Shannon discloses a smoking article comprising a short, combustible, preferably
carbonaceous, fuel element, generally less than about 30 mm long, which is substantially free of volatile organic material. A physically separate aerosol generating
means, preferably comprising a substrate bearing an aerosol forming substance, is
located within a cavity in the fuel element, i.e., the aerosol generating means is at least
partially embedded in the fuel element (Abstract). The aerosol generating means may be provided with one or more longitudinally extending holes to increase air flow and reduce pressure drop (Column 10, lines 46-49). The mouthend pieces of the invention may include an optional "filter" tip, which is used to give the article the appearance of the conventional filtered cigarette (Column 12, lines 56-58).
Shannon teaches that the use of the preferred carbonaceous fuel element, which is substantially free of volatile organic material, eliminates the presence of substantial pyrolysis or incomplete combustion products and the presence of substantial sidestream smoke (Column 4, line 66 – Column 5, line 2). Thus, it would have been obvious to one of ordinary skill in the art to select a carbonaceous fuel element such as that of Shannon to smoke the smokable tobacco substitute filler (substrate) of Mua in order to eliminate the presence of substantial pyrolysis or incomplete combustion products and the presence of substantial sidestream smoke.
Claims 19 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Mua (US 2006/0021626) in view of Fleischhauer et al. (US 6040560).
Mua discloses a smokable tobacco substitute filler (substrate) which can be formed into a smoking article ([0018]), but does not explicitly disclose an aerosol delivery device comprising the smokable tobacco substitute filler (substrate), a heat source, and an aerosol pathway extending from the smokable tobacco substitute filler (substrate) to a mouth-end of the aerosol delivery device.
Fleischhauer et al. discloses an electrical smoking system comprising a battery
power source 35a sized to provide power to heaters 37 (Column 5, lines 22-38) and a
controller configured to control power from the battery to the heater (Abstract; Column 2, lines 34-36). The smoking system is used to smoke a cigarette 23 (Column 4, lines 48-60).
Fleischhauer et al. teaches that the disclosed controller and method of applying power within an electrical cigarette system delivers consistent smoke throughout the discharge cycle of its batteries and allows the smoking experience to be precisely repeated (Column 2, lines 33-42). It would have been obvious to one of ordinary skill in the art that the smokable tobacco substitute filler (substrate) can be made into a smoking article which is heated in an electrically operated smoking system such as that of Fleischhauer et al., in order to deliver consistent smoke and precisely repeatable puff cycles (Column 2, lines 33-67).
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, 2, 6, 7, 9-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 9, 11-24 of U.S. Patent No. 12016369. Although the claims at issue are not identical, they are not patentably distinct from each other as shown below:
Instant application
U.S. Patent No. 12016369
Claim 1. An aerosol generating component comprising a substrate carrying one or more aerosol forming materials
and an active ingredient,
the substrate comprising a cellulosic material substantially free of sulfur compounds,
and further comprising one or more of a tobacco pulp, an aqueous tobacco extract, a filler,
and a binder.
Claim 1. An aerosol generating component comprising a substrate carrying one or more aerosol forming materials…
Claim 14. …wherein the substrate further carries…an active ingredient…
Claim 1. …the substrate comprising a cellulosic material substantially free of sulfur compounds…
one or more of a tobacco pulp and an aqueous tobacco extract…
a filler…and
a binder….
Claim 2. The aerosol generating component of claim 1, wherein the cellulosic material is a cellulosic pulp or regenerated cellulose comprising at least about 90% cellulose by weight.
Claim 2. The aerosol generating component of claim 1, wherein the cellulosic material is a cellulosic pulp or regenerated cellulose comprising at least about 90% cellulose by weight.
Claim 6. The aerosol generating component of claim 1, wherein the cellulosic material contains less than about 350 ppm of sulfur compounds, measured as elemental sulfur.
Claim 1. An aerosol generating component comprising…wherein the
cellulosic material contains from about 100 ppm to about 350 ppm of sulfur compounds, measured as elemental sulfur…
Claim 7. The aerosol generating component of claim 1, wherein the cellulosic material contains from about 100 ppm to about 350 ppm of sulfur compounds, measured as elemental sulfur.
Claim 1. An aerosol generating component comprising…wherein the
cellulosic material contains from about 100 ppm to about 350 ppm of sulfur compounds, measured as elemental sulfur…
Claim 9. The aerosol generating component of claim 1, wherein the binder is selected from the group consisting of alginates, starches, gums, dextrans, carrageenan, povidone, pullulan, zein, or combinations thereof.
Claim 9. The aerosol generating component of claim 1, wherein the binder is an alginate…
Claim 10. The aerosol generating component of claim 1, wherein the filler is selected from the group consisting of maltodextrin, dextrose, calcium carbonate, calcium phosphate, lactose, sugar alcohols, microcrystalline cellulose, and combinations thereof.
Claim 9. The aerosol generating component of claim 1, wherein…the filler is calcium carbonate.
Claim 11. The aerosol generating component of claim 1, wherein the one or more aerosol forming materials are selected from the group consisting of water, polyhydric alcohols, polysorbates, sorbitan esters, fatty acids, fatty acid esters, waxes, cannabinoids, terpenes, sugar alcohols, and combinations thereof.
Claim 11. The aerosol generating component of claim 1, wherein the one or more aerosol forming materials are selected from the group consisting of water, polyhydric alcohols, polysorbates, sorbitan esters, fatty acids, fatty acid esters, waxes, cannabinoids, terpenes, sugar alcohols, and combinations thereof.
Claim 12. The aerosol generating component of claim 1, wherein the one or more aerosol forming materials are polyhydric alcohols.
Claim 12. The aerosol generating component of claim 1, wherein the one or more aerosol forming materials are polyhydric alcohols.
Claim 13. The aerosol generating component of claim 12, wherein the polyhydric alcohols are selected from the group consisting of glycerol, propylene glycol, 1,3-propanediol, diethylene glycol, triethylene glycol, and combinations thereof.
Claim 13. The aerosol generating component of claim 12, wherein the polyhydric alcohols are selected from the group consisting of glycerol, propylene glycol, 1,3-propanediol, diethylene glycol, triethylene glycol, and combinations thereof.
Claim 14. The aerosol generating component of claim 1, wherein the substrate further carries a flavorant.
Claim 14. The aerosol generating component of claim 1, wherein the substrate further carries a flavorant…
Claim 15. The aerosol generating component of claim 1, wherein the active ingredient comprises a botanical ingredient, stimulant, cannabinoid, cannabimimetic, terpene, or combination thereof.
Claim 15. The aerosol generating component of claim 14, wherein the active ingredient comprises a nicotine component.
Claim 16. The aerosol generating component of claim 1, wherein the substrate is impregnated with the one or more aerosol forming materials at a loading of from about 15 to about 55% by weight, based on a total weight of the impregnated substrate.
Claim 16. The aerosol generating component of claim 1, wherein the substrate is impregnated with the one or more aerosol forming materials at a loading of from about 15 to about 55% by weight, based on a total weight of the impregnated substrate.
Claim 17. The aerosol generating component of claim 1, wherein the substrate is in particulate form, shredded form, film form, paper process sheet form, cast sheet form, bead form, granular rod form, or extrudate form.
Claim 17. The aerosol generating component of claim 1, wherein the substrate is in particulate form, shredded form, film form, paper process sheet form, cast sheet form, bead form, granular rod form, or extrudate form.
Claim 18. The aerosol generating component of claim 1, wherein the substrate is formed into a substantially cylindrical shape.
Claim 18. The aerosol generating component of claim 17, wherein the substrate is formed into a substantially cylindrical shape.
Claim 19. An aerosol delivery device, comprising: the aerosol generating component of claim 1;
a heat source configured to heat the substrate carrying the one or more aerosol forming materials to form an aerosol; and
an aerosol pathway extending from the aerosol generating component to a mouth-end of the aerosol delivery device.
Claim 19. An aerosol delivery device, comprising: the aerosol generating component of claim 1;
a heat source configured to heat the substrate carrying the one or more aerosol forming materials to form an aerosol; and
an aerosol pathway extending from the aerosol generating component to a mouth-end of the aerosol delivery device.
Claim 20. The aerosol delivery device of claim 19, wherein the heat source comprises either an electrically powered heating element or a combustible ignition source.
Claim 20. The aerosol delivery device of claim 19, wherein the heat source comprises either an electrically powered heating element or a combustible ignition source.
Claim 21. The aerosol delivery device of claim 19, wherein the heat source is a combustible ignition source comprising a carbon-based material.
Claim 21. The aerosol delivery device of claim 19, wherein the heat source is a combustible ignition source comprising a carbon-based material.
Claim 22. The aerosol delivery device of claim 19, wherein the heat source is an electrically- powered heating element.
Claim 22. The aerosol delivery device of claim 19, wherein the heat source is an electrically- powered heating element.
Claim 23. The aerosol delivery device of claim 22, further comprising a power source electronically connected to the heating element.
Claim 23. The aerosol delivery device of claim 22, further comprising a power source electronically connected to the heating element.
Claim 24. The aerosol delivery device of claim 23, further comprising a controller configured to control the power transmitted by the power source to the heating element.
Claim 24. The aerosol delivery device of claim 23, further comprising a controller configured to control the power transmitted by the power source to the heating element.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(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, Michael Wilson can be reached on (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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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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