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 26 January 2026:
Claims 1-7, 9-13, 15, 17, 19, 21-22, 24-25, 28-29, 32-33 and 35 are pending
Claims 22, 24-25, 28-29, 32-33 and 35 are withdrawn
Claims 1 is amended
Claims 8, 14, 16, 18, 20, 23, 26-27, 30-31 and 34 are cancelled
Response to Amendment
Applicant's amendments to the claims filed 26 January 2026 have been acknowledged. The rejection to Claim 8 under 35 U.S.C. 112(b) is withdrawn due to cancellation of the claim.
Response to Arguments
Applicant's arguments filed 26 January 2026 have been fully considered but they are not persuasive.
On Pages 7-9 of Applicant’s Remarks, Applicant has amended Claim 1 to further recite the following limitation: “the volatile component is applied…such that the volatile component is predominantly present on the surface of the aerosol generating material.”
Applicant argues that there would be no reason for one ordinarily skilled in the art to modify Plattner with Hufnagel to apply a flavor composition via spraying as Plattner already incorporates the flavor composition into the aerosol-generating material and thus would not need to seek alternative application methods.
Examiner respectfully disagrees, noting that the rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art (see MPEP §§ 2143 and 2143.02).
In this case, incorporation of a flavoring component into a substrate material by mixing to form a slurry as disclosed by Plattner and the spraying of a flavoring liquid solution as disclosed by Hufnagel are both known methods for applying a flavoring into a smoking material. In fact, Hufnagel further notes that a smoking composition (i.e., material) can incorporate a flavor composition through any suitable manufacturing method, noting other methods besides spraying such as incorporating the flavor through a slurry of ingredients to form reconstituted tobacco [0050], a process similar to that of Plattner’s process for forming extruded material.
Therefore, it would be well within the ambit of one ordinarily skilled in the art to take Plattner’s extruded smoking foam and using Hufnagel’s disclosed spraying process to apply additional flavoring composition to Plattner’s extruded foam, and reasonably expect to yield a foam/smoking material that will incorporate flavoring, wherein the flavoring would also be present on the surface of said foam by virtue of the spraying process.
On Page 10 of Applicant’s Remarks, Applicant further argues that it would be counterintuitive to spray a liquid flavour component into Plattner’s foam material because a majority of the flavour component would be wicked into said foam due to its open pore design and thus, would not be predominantly present on the surface as claimed in Applicant’s amended Claim 1. Applicant does not provide further details or explanations regarding how the open-pore makes spraying a counterintuitive application method for an open pore structure.
Examiner respectfully disagrees because Applicant’s arguments seem to contradict with Applicant’s disclosure. Specifically, it should be noted that Applicant’s Specification states that the porosity of the agglomerated structure can be adjusted based on the size of the particles depending on said structure’s intended use, further discussing how particle sizes can be selected to make a more porous agglomerated structure (see Page 12, Lines 1-15). This would indicate that Applicant’s agglomerated structure can be a similarly open pore (i.e., porous) material as the one disclosed by Plattner.
Furthermore, Applicant also explicitly discloses that by spraying a liquid volatile component unto the aerosol generating material (i.e., the porous agglomerated structure) (Page 8, Lines 18-20), this will result in said volatile component being predominantly present on the surface of the aerosol generating material (Page 9, Line 1).
Therefore, one ordinarily skilled in the art would reasonably expect that if the Applicant’s agglomerated structure is a similar porous (i.e., open pore) structure as Plattner’s foam structure, then there is a reasonable expectation that spraying a volatile component on similar structures will also similarly result in said component being predominantly present on said structures’ surface. Therefore, Examiner has determined that Plattner and Hufnagel still reads upon the limitations recited in amended Claim 1 and as such, maintains the following rejections below.
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 1-7, 9-13, 15, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al (Publication No. US20210401029A1) in view of Hufnagel et al (Publication No. US20160286851A1), as evidenced by Heck et al (A Review and Assessment of Menthol Employed as a Cigarette Flavoring Ingredient, see attached copy), and National Center for Biotechnology Information (PubChem Compound Summary for Nicotine, see attached copy).
Regarding Claim 1, Plattner discloses an aerosol generating material ([0020]; foam) comprising:
particles (i.e., tobacco particles) containing an active substance (i.e., nicotine) ([0020-0021]; disclosed that tobacco naturally contains nicotine, which is considered to be an active substance);
and a volatile component ([0021, 0054]; the foam/aerosol material contains a vaporizable flavoring component (i.e., menthol) and aerosolizing agent (i.e., ethanol), which are considered equivalent to the volatile component);
wherein the aerosol generating material (i.e., foam) has an agglomerated structure comprising the tobacco particles comprising the active substance (i.e., nicotine) ([0010, 0031]; the foam is disclosed to contain a plurality of tobacco particles; the plurality of particles present in the foam implies that it is an agglomerated structure);
wherein the volatile component is incorporated into the aerosol generating material in liquid form ([0021-0022, 0026-0027]; the aerosol material can incorporate a non-tobacco flavor such as menthol in any form such as a mixture, particle matter, or solution/liquid).
Plattner does not explicitly disclose the following:
wherein the liquid volatile component is applied to the surface of the agglomerated structure;
such that the volatile component is predominantly present on the surface of the aerosol generating material;
wherein the volatile component has a vapor pressure at 20°C which is greater than or equal to the vapor pressure of the active substance at 20°C;
and wherein the release of the active substance from the aerosol generating material is controlled by competition with the release of the volatile component.
Regarding (I), Hufnagel, directed to a smoking composition, discloses an aerosol-forming substrate/material and a flavour precursor compound ([Abstract, 0072]; discloses that the flavor compound is considered as a volatile substance). The aerosol-forming substrate can comprise of extruded homogenized tobacco such as agglomerated particulate tobacco (i.e., agglomerated structure) and the flavour precursor compound, wherein the flavor precursor can be applied to said agglomerated tobacco substrate by spraying the substrate with the flavor precursor in a liquid carrier (i.e., liquid form) [0047, 0051].
Though Hufnagel does not explicitly state that the volatile/flavor component is applied to the surface of the agglomerated tobacco substrate structure, one ordinarily skilled in the art would understand that when a liquid is sprayed on a material, the sprayed liquid will be disposed (i.e., applied) on the substrate surface that is exposed to the sprayed liquid.
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 agglomerated aerosol-generating material structure and volatile flavor component disclosed by Plattner, and apply the volatile flavor component to a surface of the aerosol-generating material structure in a liquid form by spraying the volatile flavor component as disclosed by Hufnagel, as both are directed to an agglomerated tobacco aerosol-generating material, where this applies a known liquid application technique (i.e., spraying) to a similar material (i.e., tobacco substrate) to predictably yield an aerosol-generating material that has liquid volatile flavor component applied to its surface.
Regarding (II), it should be noted that Applicant’s Specification states that the porosity of the agglomerated structure can be adjusted based on the size of the particles depending on said structure’s intended use, further discussing how particle sizes can be selected to make a more porous agglomerated structure (see Page 12, Lines 1-15). This would indicate that Applicant’s agglomerated structure can be a similarly open pore (i.e., porous) material as the one disclosed by Plattner.
Furthermore, Applicant also explicitly discloses that by spraying a liquid volatile component unto the aerosol generating material (i.e., the porous agglomerated structure) (Page 8, Lines 18-20), this will result in said volatile component being predominantly present on the surface of the aerosol generating material (Page 9, Line 1).
Therefore, one ordinarily skilled in the art would reasonably expect that if the Applicant’s agglomerated structure is a similar porous (i.e., open pore) structure as Plattner’s foam structure, then there is a reasonable expectation that spraying a volatile component on similar structures will also similarly result in said component being predominantly present on said structures’ surface unless evidence of the contrary is provided.
Regarding (III), it should be noted that when the composition recited in the reference is substantially identical to that of the claim, claimed properties/functions are presumed to be inherent (see MPEP § 2112.01). In this case, Applicant discloses that nicotine is a suitable active substance (see Claim 3; Specification filed 27 October 2022, Pg. 9) and menthol is a suitable volatile component (see Claim 7, Specification filed 27 October 2022, Pg. 8).
As Plattner also discloses the same composition (i.e., aerosol material with nicotine and menthol), there is a reasonable expectation that Plattner’s aerosol material would have the same properties and function as the one claimed in Claim 1.
Furthermore, it is noted that menthol, as evidenced by Heck, has a vapor pressure of 0.8 mm Hg at 20 degrees Celsius, and nicotine, as evidenced by The National Center for Biotechnology Information (NCBI), regarding nicotine, has a vapor pressure of 0.006 kPa (0.05 mm Hg) at 20 degrees Celsius. Therefore, Plattner’s disclosure satisfies the claim limitations.
Regarding (IV), it is noted that the controlled release of the active substance is merely the intended result of the mixture of the active and volatile components. Given that Plattner discloses the same components as those disclosed by the Applicant (see Claim 1 rejection above), it is expected that they have similar functions and act in the same way as claimed.
Regarding Claim 2, Plattner further discloses that the aerosol generating material (i.e., foam/mousse) is used with an aerosol provision system ([0007]; it is disclosed that foams/mousses can be used in aerosol devices such as e-cigarettes and pipes).
Regarding Claim 3, Plattner further discloses the active substance is nicotine ([0020-0021]; disclosed that tobacco naturally contains nicotine).
Regarding Claim 4, Plattner further discloses the particles comprising the active substance are tobacco particles [0020-0021].
Regarding Claim 5, Plattner discloses the aerosol material comprises menthol which has been identified by the Applicant as a suitable volatile component (see Claim 1 rejection). As such, it is expected that if the menthol disclosed by the Applicant meets the vapor pressure limitation, then the menthol disclosed by Plattner must also satisfy the limitation.
This is further evidenced by Heck disclosing that menthol has a vapor pressure of 0.8 mm Hg at 20 degrees Celsius (i.e., 107 Pa) which satisfies the claim limitation.
Regarding Claim 6, Plattner further discloses the volatile component is a volatile flavor ([0021]; menthol is considered a flavoring agent).
Regarding Claim 7, Plattner further discloses the volatile component is menthol [0021].
Regarding Claim 9, Plattner further discloses that pH of the aerosol generating material (i.e., foam mixture) has an adjusted pH value between 5 and 9 ([0010, 0052]; the foam mixture is a precursor to the final aerosol generating material, and is considered equivalent to foam/aerosol material).
The range disclosed by Plattner falls within the range disclosed in Claim 9 (pH from 4 to 9.5) and is therefore considered to have anticipated the claimed range.
Regarding Claim 10, Plattner further discloses the pH of the aerosol generating material is increased (i.e., adjusted) by the addition of one or more bases ([0052]; pH agents disclosed such as sodium carbonate is considered a base).
Regarding Claim 11, Plattner further discloses the one or more bases comprise of carbonates (i.e., sodium carbonate) and hydrogen carbonates (i.e., potassium hydrogen carbonate) [0052].
Regarding Claim 12, Plattner further discloses the particles comprising an active substance (i.e., tobacco particles which contain nicotine) have an average diameter no greater than 3 mm ([0036]; disclosed range is 200 µm, which is within the claimed range of no greater than 3 mm).
Regarding Claim 13, Plattner further discloses the liquid volatile component comprises the volatile component and a solvent ([0022, 0026-0027]; the aerosol material can incorporate a non-tobacco flavoring agent such as menthol in any form such as a mixture, particle matter, or solution/liquid).
Regarding Claim 15, Plattner further discloses that the aerosol generating material (i.e., foam) further comprises one or more aerosol forming agents such as propylene glycol and glycerol [0045-0046].
Regarding Claim 17, Plattner further discloses the aerosol generating material further comprising a foam stabilizing agent (i.e., binder) selected from a group consisting of cellulose gum, hydroxy alkylated carbohydrates, and derivatives thereof such as carboxymethyl cellulose [0038].
Regarding Claim 19, Plattner further discloses the aerosol generating material (i.e., foam), wherein a precursor composition (i.e., third mixture) comprising the particles comprising an active substance is extruded to form the agglomerated structure [0021, 0026-0027, 0066-0067].
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al (Publication No. US20210401029A1) in view of Hufnagel et al (Publication No. US20160286851A1), as evidenced by Heck et al (A Review and Assessment of Menthol Employed as a Cigarette Flavoring Ingredient, see attached copy), and National Center for Biotechnology Information (PubChem Compound Summary for Nicotine, see attached copy) as applied to Claim 1 above, and further in view of Sears et al (Publication No. US20170065000A1).
Regarding Claim 21, Plattner further discloses the aerosol generating material (i.e., foam) is extruded into different shapes such as a hollow cylinder. Plattner does not explicitly disclose that the shape/form of said material is granules.
However, Sears, directed to an aerosol delivery system utilizing aerosol generation elements/material, discloses said aerosol element contains tobacco and may be selected from a group of extruded pieces of cylindrical or spherical shape such as granules, pellets, or beads [0008, 0093].
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 aerosol generating material disclosed by Plattner to be in the form of granules as disclosed by Sears, as both are directed to an aerosol generating material, where one ordinarily skilled in the art can substitute the known aerosol generating material extruded cylindrical shape in Plattner, with another known aerosol material extruded granule shape disclosed by Sears, with a reasonable expectation that they would yield a granule-shaped aerosol generating material capable of being heated to vaporize an active and volatile component in said aerosol material.
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 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