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
Claims 1-35 are currently pending and are subject to this office action. Claims 1 and 6-8 are amended. Claims 20-34 are withdrawn. Claim 35 is newly added. This office action is in response to Applicant’s amendment filed on 01/28/2026.
Response to Amendments
Examiner acknowledges Applicant’s response filed on 01/28/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, on pages 7-10, filed 01/28/2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are not persuasive. The Applicant has amended claim 1 to include a limitation that was previously presented in claim 8, specifically, “a volatile component that does not have a distinctive or characteristic flavor”. The Applicant argues that none of the cited references disclose a volatile component that does not have a distinctive or characteristic flavor in an aerosol generating material and that there is not motivation to modify.
The Examiner respectfully disagrees. Werner teaches that smoke formed by burning tobacco can be converted wholly or in part into a tasteless volatile form (Pg. 2, Coll. 1, Lines 10-12). Werner further teaches that substance added to the tobacco to reach the volatile state does not change or impair the natural condition and taste or aroma of the tobacco (Pg. 1, Col. 1, Lines 9-22). Werner discloses that the tasteless nature of the aerosol comes from the selection of the tasteless substance. Further, Werner discloses that by using this substance and comprising a volatile form, there would be less irritation to the mucous membranes of the user, providing a better user experience during inhalation (Pg. 1, Col. 1, Lines 16-22). Both Franke and Werner disclose aerosol forming articles with a goal of providing a desirable experience with users. Thus, the rejection over Franke in view of Werner is maintained.
The following are modified rejections based on Applicant’s 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 1, 2, 3, 4, 5, 6, 7, 8, 12, 13, 14, 15, 16, 17, 18, 19, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Franke (WO 2019016535 A1), and further in view of Werner (US 1941416 A), Buehler (US 20180228213 A1), and White (US 20190269170 A1).
With regard to Claim 1, Franke, directed a tobacco constituent releasing components, teaches (i) tobacco particles that include nicotine, related to an active substance, and volatile flavor (Pg. 9, Lines 13-15), meeting the claim limitation of an aerosol generating material comprising at least one particle comprising an active substance, and a volatile component. (ii) The tobacco constituent releasing components are able to release tobacco constituents including volatile flavors and nicotine to the user (Pg. 9, Lines 13-15).
Although not explicitly stated, (iii) a person of ordinary skill in the art would find it obvious that wherein an active substance and volatile component are released upon heating, the release behavior of one may influence the other. Since both substances rely on shared thermal input and a shared output to produce aerosol for the user, it would have been a predictable or routine modification for the release of the active substance to be controlled by the release behavior of the volatile component. Franke teaches all of the limitations of the claims as set forth above, however Franke is silent to:
A volatile component that does not have a distinctive or characteristic flavor
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
Wherein the volatile component is incorporated into the aerosol generating material by infusion, such that the volatile component is provided in pores of the at least one particle comprising the active substance
In regards to i., Werner, directed to an improved tobacco product, teaches wherein smoke formed by burning tobacco is converted wholly or in part into a tasteless volatile form (Pg. 2, Col 1, Lines 10-12) using substance that does not change the natural condition and taste or aroma of the tobacco (Pg. 2, Col. 1, Lines 9-22), meeting the claim limitation of wherein the volatile component does not have a distinctive or characteristic flavor.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the volatile component of modified Franke to not have a distinctive or characteristic flavor because both Franke and Werner are directed to aerosol generating articles with volatile components. Werner teaches wherein smoke is converted wholly or in part into a tasteless volatile form to avoid injurious action on the natural function of a user's mucous membranes (Pg. 2, Col 1, Lines 12-13) and this merely involves applying a known tasteless volatile component for use with a similar aerosol generating article to yield predictable results.
In regards to ii., Buehler, directed to an aerosol generating article, teaches a volatile delivery enhancing compound that comprises an acid. When a container comprises a nicotine-containing volatile liquid, relating to the active substance, the acid has a greater vapor pressure than the nicotine formulation at 20 °C [0070], meeting the claim limitation of 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. A person of ordinary skill in the art would be motivated to modify the volatile component of Franke with the vapor pressure of Buehler to enhance delivery of the volatile compound [0058].
Therefore, before the effective filing date of the claimed invention it would have been for obvious for one of ordinary skill in the art to modify the volatile and active components of Franke to 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 because both Franke and Buehler are directed to aerosol generating articles with volatile and active substances. Buehler teaches using a volatile compound with a greater vapor pressure at 20 °C than a nicotine to enhance delivery of the volatile compound [0058] and this merely involves applying a known pressure to a known volatile component ready for improvement to yield predictable results.
In regards to iii., White, directed to pellet substrates for vaporizing, teaches granular activated carbon pellets that may contain nicotine [0029], the pellets relate to the at least one particle of the claimed invention. The pellets are described as porous or semi-porous materials designed to have small pores to increase surface area for adsorption [0024]. Volatile aromas and/or flavoring may be infused into the granular activated carbon pellets [0054]. Infusion of volatile components into these porous pellets [0054] would obviously result in the volatile components being located within the pores of the pellets as the pellets are specifically designed to hold materials within their pores [0054]. A person of ordinary skill in the art would be motivated to modify Franke with the infusion process of White to lower the chances of burning within the device [0006].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the volatile components of Franke to where they are incorporated into the aerosol generating material by infusion because both Franke and White are directed to lowering the risk of burning in aerosol generating devices containing tobacco and volatile flavors. White teaches a known technique of incorporating volatile components into active aerosol generating materials to lower the chances of burning within the device [0006] and this merely involves applying a known type of transfer process to a similar aerosol generating substrate to yield predictable results.
With regard to Claim 2, Franke teaches wherein one or more tobacco constituent releasing components may be incorporated into an aerosol provision device (Pg. 18, Lines 20-21), meeting the claim limitation of an aerosol generating material for inclusion in an aerosol provision system.
With regard to Claim 3, Franke teaches tobacco constituents including volatile flavors and aromatic constituents, as well as nicotine (Pg. 9, Lines 13-15), wherein nicotine is the active substance, meeting the claim limitation of wherein the active substance is nicotine.
With regard to Claim 4, Franke teaches tobacco constituent releasing components for an aerosol provision device. The tobacco constituent releasing components comprise tobacco particles (Pg. 1: Line 35 and Pg. 2: Line 1), meeting the claim limitation of wherein the particles comprising the active substance are tobacco particles.
With regard to Claim 5, modified Franke teaches all the limitations of the claims as set forth above, however modified Franke is silent to:
Wherein the vapor pressure of the volatile component is at least 6 Pa at 20°C
Buehler teaches a volatile delivery enhancing compound comprising an acid having a vapor pressure of at least about 5 Pa at 20° C [0070]. The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to modify the vapor pressure of modified Franke to wherein the vapor pressure of the volatile component is at least 6 Pa at 20°C because both Franke and Buehler are directed to aerosol generating articles with volatile and active substances. Buehler teaches using a volatile compound with a greater vapor pressure at 20 °C than a nicotine to enhance delivery of the volatile compound [0058] and this merely involves applying a known pressure to a known volatile component ready for improvement to yield predictable results.
With regard to Claim 6, Franke teaches tobacco constituents which may include flavor modifiers (Pg. 10, Lines 30-31).
With regard to Claim 7, Franke teaches wherein the flavor modifiers may include menthol, spearmint, and/or peppermint (Pg. 11, Lines 2-4).
With regard to Claim 8, Franke teaches wherein aerosol or vapor may be drawn through a tobacco segment to pick up tobacco flavors, thus obtaining the tobacco flavoring from the tobacco and incorporating them into the aerosol (Pg. 22, Lines 14-16). One of ordinary skill in the art would have understood that extracting tobacco for flavoring is a simple alternative and would achieve the same result of adding tobacco flavoring to aerosol deliver to a user.
With regard to Claim 12, Franke teaches wherein tobacco particles have an average diameter no greater than 3 mm, no greater than 1 mm, no greater than 0.5 mm, or no greater than 0.3 mm (Pg. 2, Lines 11-12).
With regard to Claim 13, Franke teaches wherein a tobacco constituent has one or more aerosol forming agents included (Pg. 2, Line 14), meeting the claim limitation of an aerosol generating material further comprising one or more aerosol forming agent.
With regard to Claim 14, Franke teaches wherein a combination of aerosol forming agents may be used, in equal or differing proportions, where glycerol and propylene glycol are particularly preferred (Pg. 10, Lines 26-28), meeting the claim limitation of wherein the aerosol forming agent is elected from the group consisting of glycerol, propylene glycol, and glyceryl triacetate.
With regard to Claim 15, Franke teaches wherein a precursor composition may include one or more binder (Pg. 2, Line 18), meeting the claim limitation of an aerosol generating material further comprising one or more binder.
With regard to Claim 16, Franke teaches wherein the one or more binder is selected from the group consisting of: thermoreversible gelling agents, such as gelatin; starches; polysaccharides; pectins; celluloses; cellulose derivatives, such as carboxymethylcellulose; and alginates (Pg. 2, Lines 18-21), meeting the claim limitation of wherein the one or more binder is selected from the group consisting of: thermoreversible gelling agents, such as gelatin; starches; polysaccharides; pectins; celluloses; cellulose derivates, such as carboxymethylcellulose; and alginates.
With regard to Claim 17, Franke teaches wherein a precursor composition comprising tobacco particles is granulated or spheronized to form an agglomerated structure (Pg. 2, Line 25-26).
With regard to Claim 18, Franke teaches wherein the precursor composition comprising tobacco particles is extruded to form the agglomerated structure (Pg. 2, Lines 28-29)
With regard to Claim 19, Franke teaches wherein components of the precursor composition are in the form of granules (Pg. 2, Line 31).
With regard to Claim 35, Franke teaches wherein the flavor modifiers may include menthol, peppermint, spearmint, and mint oils (Pg. 11, Lines 4-7) . One of ordinary skill in the art would know that such materials provide a cooling sensation to users.
Claims 9, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Franke (WO 2019016535 A1), Werner (US 1941416 A), Buehler (US 20180228213 A1), and White (US 20190269170 A1), as applied to claim 1 above, and further in view of Aoun (US 20180279666 A1)
With regard to Claim 9, Franke teaches wherein the pH of a precursor composition containing tobacco particles for producing aerosol is at least about 7.5 (Pg. 2, Line 9). Modified Franke teaches all of the limitation of the claims as set forth above, however modified Franke is silent to:
Wherein the pH of the aerosol generating material is from about 4 to about 9.5
Aoun, directed to an aerosol generating material and devices, teaches a tobacco extract included in an aerosol generating material. The tobacco extract may have a pH in the range of 5 to 9 [0038], having a significant amount of overlap to the pH range of the claimed invention and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to substitute the pH of the aerosol generating material of Franke from about 4 to 9.5 because both Franke and Aoun are directed to aerosol generating material containing tobacco. Aoun teaches a tobacco extract in an aerosol generating material with a pH in the range of 5 to 9 to produce a mixable slurry that is easily processable into an aerosol generating material [0034] and this merely involves simple substitution of a known pH of an aerosol generating material for another pH to obtain predictable results.
With regard to Claim 10, Franke teaches wherein in some embodiments the pH of a composition is increased by the addition of one or more bases or a basic buffer system. (Pg. 1, Line 31-32).
With regard to Claim 11, Franke teaches wherein the one or more bases are selected from the group consisting of hydroxides, carbonates and hydrogen carbonates. In some embodiments the one or more base is selected from the group consisting of: potassium hydroxide, sodium hydroxide, sodium carbonate and sodium bicarbonate (Pg. 2, Lines 4-7).
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 OLUWATOSIN O DIYAN whose telephone number is (571)270-0789. The examiner can normally be reached Monday-Thursday 8:30 am - 6 pm.
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 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.
/O.O.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755