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 .
Response to Amendment
Claims 1, 5, 8-9, 17 are amended. Claims 10, 12 and 26-33 are withdrawn. Claims 22 and 25 are cancelled. Claims 1-9, 11, 13-21 and 23-24 are presently examined.
Applicant’s arguments regarding the objection to the drawings have been fully considered and are persuasive. The objection of 10/1/2025 is withdrawn.
Applicant’s arguments regarding the objection to the abstract have been fully considered and are persuasive. The objection of 10/1/2025 is withdrawn.
Applicant’s arguments regarding the objections to the specification have been fully considered and are persuasive. The objections of 10/1/2025 are withdrawn.
Specification
The use of the term FIBREX (page 31, line 34), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks7, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 14, the phrase "e.g." renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of this Office action, the limitation following “e.g.” will not be considered to limit the claim.
The claim recites the limitation “wherein the additional aroma is selected from the group consisting of: citrus, fruity, floral, herbal, creamy (e.g. chocolate), roasted, nutty or a combination thereof,” which is indefinite since each of the possible additional aromas is a subjective term. Different consumers may perceive different aromas as being, for instance, a fruity aroma. With the sole exception of chocolate being indicated as a possible creamy aroma, the specification gives no guidance as to which aromas would be considered to fall within the claimed terms. One of ordinary skill in the art would therefore be unable to recognize what specific aromas fall within the scope of the claim, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it required any aroma derived from a plant.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-4, 6, 9, 13-21 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Davidson (US 11,229,758).
Regarding claims 1-4, 9, 15 and 25, Davidson discloses a source material that is configured to release substances (abstract) having a source material that comprises plant material comprising Mentha spicata, which is considered to meet the claim limitation of a first botanical, Melissa officianlis, which is considered to meet the claim limitation of a second botanical, and ginger, which is considered to meet the claim limitation of an aroma in addition to mint (column 18, lines 57-67, column 19, lines 1-67, column 20, lines 1-3). One of the components can isolated from the plant (column 18, lines 57-67, column 19, lines 1-67, column 20, lines 1-3), which is considered to meet the claim limitation of a synthetic derivative. The source material is provided in a carrier material that is a fiber matrix that fixes the source material into place (column 18, lines 27-53), which is considered to meet the claim limitation of a substrate material. Davidson does not explicitly disclose selected the indicated compounds from the list to make the source material.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the indicated components from the list of Davidson to form the source material of Davidson. One would have been motivated to do so since Davidson discloses that the source material can be made from a combination of components from the list.
Regarding claim 6, Davidson discloses that the source material can include Eucalyptus globus (column 18, lines 57-67, column 19, lines 1-67, column 20, lines 1-3), which is considered to meet the claim limitation of a first botanical.
Regarding claim 13, Davidson discloses that the source material can also include thyme (column 18, lines 57-67, column 19, lines 1-67, column 20, lines 1-3), which is considered to meet the claim limitation of a third botanical from the family Lamiaceae.
Regarding claim 14, the ginger of Davidson is considered to meet the claim limitation of an herbal flavor derived from a plant.
Regarding claim 16, Davidson discloses that the source material includes ginger (column 18, lines 57-67, column 19, lines 1-67, column 20, lines 1-3), which is considered to meet the claim limitation of a sensate compound.
Regarding claims 17 and 18, Davidson discloses that the source material contains nicotine (column 18, lines 27-53).
Regarding claim 19, Davidson discloses that the substrate is a solid structure (column 15, lines 1-4), indicating that the composition as a whole must also be solid.
Regarding claim 20, Davidson discloses that the source material contains THC as an alternative to nicotine (column 18, lines 27-53), indicating that it is nicotine free.
Regarding claim 21, the compound isolated from a plant of Davidson is considered to meet the claim limitation of a natural extract.
Regarding claim 24, Davidson discloses that the source material has propylene glycol added to it so that it originates a vapor (column 30, lines 14-19).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Davidson (US 11,229,758) as applied to claim 1 above, and further in view of Cantrell (US 7,647,932).
Regarding claim 5, modified Davidson teaches all the claim limitations as set forth above. Modified Davidson does not explicitly teach the first botanical being wintergreen.
Cantrell teaches a flavoring agent for an aerosol that is either mint or wintergreen (column 24, lines 53-67, column 1, lines 1-7)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention substitute the Mentha spicata of modified Davidson for the wintergreen of Cantrell. One would have been motivated to do so since Cabot teaches that mint and wintergreen are equivalent flavorings for aerosolizable flavoring agents. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Davidson (US 11,229,758) as applied to claim 1 above, and further in view of Seo (US 2021/0092990).
Regarding claim 7, modified Davidson teaches all the claim limitations as set forth above. Modified Davidson does not explicitly teach the composition having geranium.
Seo teaches an aerosol generating rod having a medium portion with a plurality of strands (abstract) that have either a geranium or mint flavoring agent [0055].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Mentha spicata of modified Davidson for the geranium flavoring of Seo. One would have been motivated to do so since Seo teaches that geranium and mint are equivalent flavorings for aerosolizable materials. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Davidson (US 11,229,758) as applied to claim 1 above, and further in view of Chen (US 12,133,550).
Regarding claim 8, modified Davidson teaches all the claim limitations as set forth above. Modified Davidson does not explicitly teach the first botanical being Agastache rugosa.
Chen teaches a cigarette filter that is flavored with Agastache rugosa that is applied to the filter rod (column 10, lines 20-52). The smoke passes through the filter in voids of the filter (column 5, lines 22-55), indicating that flavor must enter the smoke since it would otherwise fail to provide any flavor at all.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Mentha spicata of modified Davidson for the Agastache rugosa of Chen. One would have been motivated to do so since Davidson discloses that Mentha spicata is a suitable material for flavoring a source material for aerosolization and Chen teaches that Agastache rugosa is a suitable flavor for entering into a smoke stream for inhalation. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Davidson (US 11,229,758) as applied to claim 1 above, and further in view of Plant Information (Plant Information, Mountain Herb Estate, https://web.archive.org/web/20160610014148/https://www.herbgarden.co.za/mountainherb/herbiher.php?id=393).
Regarding claim 11, modified Davidson teaches all the claim limitations as set forth above. Davidson additionally teaches that the source material can include Mentha piperita (column 18, lines 57-67, column 19, lines 1-67, column 20, lines 1-3). Modified Davidson does not explicitly teach the first botanical being Mentha x piperita f. citrate ‘Basil’.
Plant Information teaches that Mentha x piperita f. citrate ‘Basil’ (page 1, top) is anti-inflammatory, antiseptic, anti-bacterial, anti-spasmodic, anti-flatulent, and a stimulant (page 1, bottom).
It would therefore have been obvious to one of ordinary skill in the art to substitute the Mentha spicata of modified Davidson for the Mentha x piperita f. citrate ‘Basil’ of Plant Information. One would have been motivated to do so since Davidson discloses that either Mentha spicata or Mentha piperita can be used as a source material and Plant Information teaches a variety of Mentha piperita that is anti-inflammatory, antiseptic, anti-bacterial, anti-spasmodic, anti-flatulent, and a stimulant.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Davidson (US 11,229,758) as applied to claim 1 above, and further in view of Sebastian (US 11,324,249).
Regarding claim 23, modified Davidson teaches all the claim limitations as set forth above. Modified Davidson does not explicitly teach a loading of the source material onto the substrate.
Sebastian teaches a nanocellulose material that is impregnated with aerosol precursor composition at a loading of at least about 20% by weight based on the total weight (column 2, lines 27-52) to achieve a sufficient loading of the composition and avoid inconsistent flavor release (column 1, lines 48-58).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine substrate of modified Davidson with the loading of Sebastian. One would have been motivated to do so since Sebastian teaches an aerosol precursor loading that avoids inconsistent flavor release. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Response to Arguments
Regarding the rejections under 35 USC 112(b), applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the phrase “e.g. chocolate” has been removed and (b) that the limitation “additional aroma” is definite.
Regarding (a), applicant’s instant amendment did not amend claim 14 in any way.
Regarding (b), the recitation of “additional aroma” or “aroma in additional to mint” does not by itself raise an issue under 35 USC 112(b). Indeed the limitation is used in claim 1 without raising such an issue. Rather the issue in the instant claim is that the additional aroma is further limited by terms that are themselves indefinite. Applicant’s specification provides no guidance as to which aromas are considered “fruity,” “floral,” “roasted,” “nutty,” etc. That is the reason the claim is indefinite, not because the term “additional aroma” by itself is considered to be indefinite.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that Davidson teaches away from providing multiple aromas within a single source material section, as opposed to multiple source material sections that each provide a single aroma, (b) that the source material must be a volatilizing substance, (c) that Davidson does not disclose a substrate material that carries the composition, (d) that the claimed invention is directed to creating an enjoyable, non-traditional sensory experience, and (e) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the mere fact that one source material section of Davidson would provide multiple aromas as set forth above would not impugn the presence of additional source material sections. While it may be true that Davidson requires multiple source material sections, the modification as set forth above does not propose to eliminate any source material section that may be in Davidson. Further Davidson has no explicit disclosure that combining two different aromas produces negative effects that would constitute a teaching away since Davidson does not criticize, discredit, or otherwise discourage the claimed solution. See MPEP § 2145 X D 1. Davidson provides motivation for the modification as proposed by disclosing that “the source material comprises one or more substances extracted and/or isolated from one or more of the aforesaid plants and/or a synthetic version of such active substances” (column 19, line 67, column 20, lines 1-3) (italics added). The possibility of a source comprising multiple components is envisioned by Davidson, which would lead one of ordinary skill in the art to make the modification. See MPEP § 2144.08 II A 4 (b).
Regarding (b), the claims do not require or preclude the mint-flavored composition from being a volatilizing composition. While Davidson may disclose a volatilizing mint-flavored composition, there is no indication that the claims exclude such a composition from meeting the claim limitations.
Regarding (c), Davidson discloses that the source material is provided in a carrier material that is a fiber matrix that fixes the source material into place by absorbing it (column 18, lines 27-53). The claim requires the substrate material to “otherwise carry” the composition, which is considered to be met when the source material is held within a matrix as in Davidson.
Regarding (d), modified Davidson teaches all of the claimed limitations. The claims nowhere require a non-traditional sensory experience. Furthermore, even if the claims were amended to include such a requirement, Davidson would be considered to provide such an experience since it has the claimed composition.
Regarding (e), all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
THIS ACTION IS MADE FINAL. 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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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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.
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/RUSSELL E SPARKS/
Primary Examiner, Art Unit 1755