DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Status of the Claims
Claims 1-3, 5-11, and 13-22 are pending. Claims 10-11 and 13 are withdrawn. Claims 1 and 9-11 have been amended. Claims 21-22 are new.
Response to Amendments
The Examiner acknowledges Applicant's response filed on 10/30/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments with respect to claims 1-3, 5-9, and 14-22 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 8, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Plattner et al. (WO 2018/122375 A1, a copy of which was included with the IDS dated 12/22/2022).
Regarding claim 1, Plattner discloses an aerosol-generating article (“foam”, Page 2, Line 8) comprising a tobacco-containing aerosol-generating substrate (“foam” comprises both an “aerosol forming agent” and a “tobacco ingredient containing agent”, Page 2, Lines 8-9) including aerated foam of glycerol and at least one propanediol ("a combination of glycerol and propylene glycol can be used as aerosol forming agent", Page 11, Lines 19-20, "foam structure in the foams is not particularly limited and can, for example, comprise trapped air bubbles", Page 7, Lines 36-37) and a plurality of non-tobacco granulated flavour particles (“foam” comprises an “inhalable agent”, Page 2, Lines 8-9; “inhalable agent” can be “particle matter” that includes “a flavor, e.g. menthol”, Page 4, Lines 16-19) incorporated into the aerosol-generating substrate.
Regarding claim 8, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner also discloses the article further comprising a tobacco-containing portion comprising the aerosol-generating substrate (a tobacco-containing portion comprising the aerosol-generating substrate described in the rejection of claim 1 above) and a filter portion (“filter”, Page 14, Lines 6-7).
Regarding claim 21, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner further discloses wherein the aerated foam is a whipped, aerated foam (“whipped”, Page 8, Line 7).
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.
Claims 2 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1) as applied to claim 1 above.
Regarding claim 2, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner further discloses wherein 0.1 % to 33 % of a total weight of the aerosol-generating substrate is the plurality of granulated flavour particles ("the weight of . . . the inhalable agent is 0.1 - 33 wt.-% of the weight of the foam", Page 2, Lines 10-11). Since the range 0.1 % to 33 % overlaps the claimed range of up to 10.0 %, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 17, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner further discloses wherein the plurality of granulated flavour particles is provided ranging from between 0.1 wt. % and 33 wt. % of the total weight of the aerosol-generating substrate ("the weight of . . . the inhalable agent is 0.1 - 33 wt.-% of the weight of the foam", Page 2, Lines 10-11). Since the range 0.1 wt. % to 33 wt. % overlaps the claimed range of between 3.5 wt. % and 7.0 wt. %, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 18, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner further discloses wherein the plurality of granulated flavour particles is provided ranging from between 0.1 wt. % and 33 wt. % of the total weight of the aerosol-generating substrate ("the weight of . . . the inhalable agent is 0.1 - 33 wt.-% of the weight of the foam", Page 2, Lines 10-11). Since the range 0.1 wt. % to 33 wt. % overlaps the claimed range of between 4.5 wt. % and 6.0 wt. %, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Claims 3 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1) as applied to claim 1 above, in view of Narasimhan et al. (US 2021/0315261 A1).
Regarding claim 3, Plattner discloses the aerosol-generating article according to claim 1, as stated above. However, Plattner does not disclose the weight of the plurality of granulated flavour particles or the volume of the aerosol-generating substrate in order to calculate the density of the plurality of granulated flavour particles in the aerosol-generating substrate to determine if it falls within the claimed range of less than 2.0 g/cm3. Instead, Plattner indicates that one of ordinary skill in the art should look to e-liquids for the proportion of flavour particles such as menthol to include in the aerosol-generating substrate ("The inhalable agents can be included to have the same approximate proportion with the aerosol forming agent as found in conventional e-liquids well known to persons skilled in the art.", Page 4, Lines 20-22). Narasimhan, in the field of e-liquids, teaches including menthol in e-liquid in the proportion of 3 g per 100 mL (“menthol is present at 3 g per 100 ml”, ¶ 0061, where 3 g per 100 ml is equivalent to 0.03 g/cm3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included the menthol granulated flavour particles in the aerosol-generating substrate taught by Plattner in the density of 0.03 g/cm3 taught by Narasimhan. The density 0.03 g/cm3 falls within the claimed range of less than 2.0 g/cm3 (MPEP § 2131.03).
Regarding claim 14, Plattner discloses the aerosol-generating article according to claim 1, as stated above. However, Plattner does not disclose the weight of the plurality of granulated flavour particles or the volume of the aerosol-generating substrate in order to calculate the density of the plurality of granulated flavour particles in the aerosol-generating substrate to determine if it falls within the claimed range of less than 1.0 g/cm3. Instead, Plattner indicates that one of ordinary skill in the art should look to e-liquids for the proportion of flavour particles such as menthol to include in the aerosol-generating substrate ("The inhalable agents can be included to have the same approximate proportion with the aerosol forming agent as found in conventional e-liquids well known to persons skilled in the art.", Page 4, Lines 20-22). Narasimhan, in the field of e-liquids, teaches including menthol in e-liquid in the proportion of 3 g per 100 mL (“menthol is present at 3 g per 100 ml”, ¶ 0061, where 3 g per 100 ml is equivalent to 0.03 g/cm3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included the menthol granulated flavour particles in the aerosol-generating substrate taught by Plattner in the density of 0.03 g/cm3 taught by Narasimhan. The density 0.03 g/cm3 falls within the claimed range of less than 1.0 g/cm3 (MPEP § 2131.03).
Regarding claim 15, Plattner discloses the aerosol-generating article according to claim 1, as stated above. However, Plattner does not disclose the weight of the plurality of granulated flavour particles or the volume of the aerosol-generating substrate in order to calculate the density of the plurality of granulated flavour particles in the aerosol-generating substrate to determine if it falls within the claimed range of less than 0.5 g/cm3. Instead, Plattner indicates that one of ordinary skill in the art should look to e-liquids for the proportion of flavour particles such as menthol to include in the aerosol-generating substrate ("The inhalable agents can be included to have the same approximate proportion with the aerosol forming agent as found in conventional e-liquids well known to persons skilled in the art.", Page 4, Lines 20-22). Narasimhan, in the field of e-liquids, teaches including menthol in e-liquid in the proportion of 3 g per 100 mL (“menthol is present at 3 g per 100 ml”, ¶ 0061, where 3 g per 100 ml is equivalent to 0.03 g/cm3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included the menthol granulated flavour particles in the aerosol-generating substrate taught by Plattner in the density of 0.03 g/cm3 taught by Narasimhan. The density 0.03 g/cm3 falls within the claimed range of less than 0.5 g/cm3 (MPEP § 2131.03).
Regarding claim 16, Plattner discloses the aerosol-generating article according to claim 1, as stated above. However, Plattner does not disclose the weight of the plurality of granulated flavour particles or the volume of the aerosol-generating substrate in order to calculate the density of the plurality of granulated flavour particles in the aerosol-generating substrate to determine if it falls within the claimed range of between 0.01 g/cm3 and 0.1 g/cm3. Instead, Plattner indicates that one of ordinary skill in the art should look to e-liquids for the proportion of flavour particles such as menthol to include in the aerosol-generating substrate ("The inhalable agents can be included to have the same approximate proportion with the aerosol forming agent as found in conventional e-liquids well known to persons skilled in the art.", Page 4, Lines 20-22). Narasimhan, in the field of e-liquids, teaches including menthol in e-liquid in the proportion of 3 g per 100 mL (“menthol is present at 3 g per 100 ml”, ¶ 0061, where 3 g per 100 ml is equivalent to 0.03 g/cm3). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have included the menthol granulated flavour particles in the aerosol-generating substrate taught by Plattner in the density of 0.03 g/cm3 taught by Narasimhan. The density 0.03 g/cm3 falls within the claimed range of between 0.01 g/cm3 and 0.1 g/cm3 (MPEP § 2131.03).
Claims 5-6 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1) as applied to claim 1 above, in view of Tanaka et al. (US 2011/0061667 A1).
Regarding claim 5, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner also discloses that the plurality of granulated flavour particles may include flavors such as menthol (Page 4, Lines 16-20). However, Plattner does not explicitly disclose wherein the plurality of granulated flavour particles comprise a gel of a polysaccharide.
Tanaka, in the same field of endeavor, teaches coating a flavor, for example menthol, with a gel of a polysaccharide that contains no gelling agent (¶ 0015-0016). Tanaka teaches benefits of this coating in that it allows for high flavor retention (¶ 0022) without contamination with a gelling agent such as a metal chloride used in other flavor encapsulation techniques (¶ 0007, 0017) or the need for crushing for flavor release (¶ 0010). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have coated the plurality of granulated flavour particles taught by Plattner with the gel of a polysaccharide that contains no gelling agent taught by Tanaka, in order to obtain these benefits.
Regarding claim 6, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner also discloses that the plurality of granulated flavour particles may include flavors such as menthol (Page 4, Lines 16-20). However, Plattner does not explicitly disclose wherein the plurality of granulated flavour particles comprises a gel of a polysaccharide containing no gelling agent.
Tanaka, in the same field of endeavor, teaches coating a flavor, for example menthol, with a gel of a polysaccharide that contains no gelling agent (¶ 0015-0016). Tanaka teaches benefits of this coating in that it allows for high flavor retention (¶ 0022) without contamination with a gelling agent such as a metal chloride used in other flavor encapsulation techniques (¶ 0007, 0017) or the need for crushing for flavor release (¶ 0010). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have coated the plurality of granulated flavour particles taught by Plattner with the gel of a polysaccharide that contains no gelling agent taught by Tanaka, in order to obtain these benefits.
Regarding claim 22, Plattner discloses the aerosol-generating article according to claim 5, as stated above. Plattner further discloses wherein the amount of glycerol and the at least one propanediol is 40 wt % to 70 wt % based on a total weight of the aerosol-generating substrate ("the total mass of the aerosol forming agent is . . . preferably 40 - 70 wt.-% of the weight of the foam", Page 11, Lines 31-32). As Plattner teaches the range of wt % for the amount of glycerol and the at least one propanediol, the only decision left to one having ordinary skill in the art is the selection of the specific value within that range to use. As Plattner indicates that each value within that range is functional, and there are no limitations as to the specific value within that range to use, one having ordinary skill in the art could have chosen any value within the range and would understand it to yield a predictable result. As such, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select a value of 60 wt % as claimed because varying the wt % is the only variable which needs to be selected; the size of range disclosed by Plattner is small; varying the values within the range disclosed by the prior art results in an article having the same utility as that of the claimed invention; tuning to the specific claimed value would have been within the level of skill of one having ordinary skill in the art; and the results would have been predictable (see MPEP § 2144.08).
Claims 7 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1) as applied to claim 1 above, in view of Besso et al. (US 2013/0206151 A1).
Regarding claim 7, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner discloses granulated flavour particles (“inhalable agent” can be “particle matter” that includes “a flavor, e.g. menthol”, Page 4, Lines 16-19). However, Plattner does not disclose the diameter of the granulated flavour particles to determine whether or not the diameter falls within the claimed range.
Besso, in the same field of endeavor, teaches granulated flavour particles (“flavour granules” that comprise “menthol”, ¶ 0073) with a mean diameter of between about 0.1 mm and about 2.5 mm (“average diameter of the flavour granules is preferably between about 0.1 mm and about 2.5 mm”, ¶ 0050). Both Plattner and Besso disclose the same function for the granulated flavour particles of providing a controlled release of flavor (see Plattner Page 17, Lines 12-13 and Besso ¶ 0004). As such, one of ordinary skill in the art could have used granulated flavour particles having a diameter within the range taught by Besso, and the result would have been predictable, as the granulated flavour particles still perform the same function. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to use the diameter range for granulated flavour particles taught by Besso, as Plattner is silent as to the diameter of the granulated flavour particles, the granulated flavour particles must have some diameter, and Besso discloses diameters that are suitable for the intended purpose. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the granulated flavour particles taught by Plattner with diameters within the range of between about 0.1 mm and about 2.5 mm, as taught by Besso (see MPEP § 2143(I)(A)). The range between about 0.1 mm and about 2.5 mm falls within the claimed range of between 0.1 mm and 3 mm (MPEP § 2131.03).
Regarding claim 19, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner discloses granulated flavour particles (“inhalable agent” can be “particle matter” that includes “a flavor, e.g. menthol”, Page 4, Lines 16-19). However, Plattner does not disclose the diameter of the granulated flavour particles to determine whether or not the diameter falls within the claimed range.
Besso, in the same field of endeavor, teaches granulated flavour particles (“flavour granules” that comprise “menthol”, ¶ 0073) with a mean diameter of between about 0.1 mm and about 2.5 mm (“average diameter of the flavour granules is preferably between about 0.1 mm and about 2.5 mm”, ¶ 0050). Both Plattner and Besso disclose the same function for the granulated flavour particles of providing a controlled release of flavor (see Plattner Page 17, Lines 12-13 and Besso ¶ 0004). As such, one of ordinary skill in the art could have used granulated flavour particles having a diameter within the range taught by Besso, and the result would have been predictable, as the granulated flavour particles still perform the same function. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to use the diameter range for granulated flavour particles taught by Besso, as Plattner is silent as to the diameter of the granulated flavour particles, the granulated flavour particles must have some diameter, and Besso discloses diameters that are suitable for the intended purpose. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the granulated flavour particles taught by Plattner with diameters within the range of between about 0.1 mm and about 2.5 mm, as taught by Besso (see MPEP § 2143(I)(A)). Since the range between about 0.1 mm and about 2.5 mm overlaps the claimed range of between 0.5 mm and 2 mm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 20, Plattner discloses the aerosol-generating article according to claim 1, as stated above. Plattner discloses granulated flavour particles (“inhalable agent” can be “particle matter” that includes “a flavor, e.g. menthol”, Page 4, Lines 16-19). However, Plattner does not disclose the diameter of the granulated flavour particles to determine whether or not the diameter falls within the claimed range.
Besso, in the same field of endeavor, teaches granulated flavour particles (“flavour granules” that comprise “menthol”, ¶ 0073) with a mean diameter of between about 0.1 mm and about 2.5 mm (“average diameter of the flavour granules is preferably between about 0.1 mm and about 2.5 mm”, ¶ 0050). Both Plattner and Besso disclose the same function for the granulated flavour particles of providing a controlled release of flavor (see Plattner Page 17, Lines 12-13 and Besso ¶ 0004). As such, one of ordinary skill in the art could have used granulated flavour particles having a diameter within the range taught by Besso, and the result would have been predictable, as the granulated flavour particles still perform the same function. One of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to use the diameter range for granulated flavour particles taught by Besso, as Plattner is silent as to the diameter of the granulated flavour particles, the granulated flavour particles must have some diameter, and Besso discloses diameters that are suitable for the intended purpose. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the granulated flavour particles taught by Plattner with diameters within the range of between about 0.1 mm and about 2.5 mm, as taught by Besso (see MPEP § 2143(I)(A)).
As Besso teaches the range of diameters for the granulated flavour particles, the only decision left to one having ordinary skill in the art is the selection of the specific value within that range to use. As Besso indicates that each value within that range is functional, and there are no limitations as to the specific value within that range to use, one having ordinary skill in the art could have chosen any value within the range and would understand it to yield a predictable result. As such, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select a value of 1.5 mm as claimed because varying the diameter is the only variable which needs to be selected; the size of range disclosed by Besso is small; varying the values within the range disclosed by the prior art results in an article having the same utility as that of the claimed invention; tuning to the specific claimed value would have been within the level of skill of one having ordinary skill in the art; and the results would have been predictable (see MPEP § 2144.08).
Claims 9 is rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1) as applied to claim 1 above, in view of Mishra et al. (US 2019/0075838 A1).
Regarding claim 9, Plattner discloses the aerosol-generating article according to claim 1, as stated above. However, Plattner does not explicitly disclose wherein the plurality of non-tobacco granulated flavour particles are incorporated in the aerosol-generating substrate in an increasing gradient density towards a longitudinal central axis of the aerosol-generating article.
Mishra, in the same field of endeavor, teaches an aerosol-generating article (“smoking rod 102”, Fig. 1c, ¶ 0042) comprising a tobacco-containing aerosol-generating substrate (“smoking material 106” that includes “tobacco filler particles 106T”, Fig. 2b, ¶ 0042) and plurality of non-tobacco granulated particles (“cellulose filler particles 106C”, Fig. 2b, ¶ 0042), wherein the plurality of non-tobacco granulated particles are incorporated in the aerosol-generating substrate in an increasing gradient density (“cellulose filler particles 106C have a higher concentration along or surrounding a central axis A of the smoking rod 102 than do the tobacco filler particles 106T”, ¶ 0042, see Fig. 2b) towards a longitudinal central axis (“central axis A”, Fig. 2b, ¶ 0042) of the aerosol-generating article. Mishra also discloses a benefit of including the particles in a gradient in that it appropriately positions the particles of the substrate along the temperature gradient of the substrate (¶ 0003, 0043). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the aerosol-generating article taught by Plattner to incorporate the plurality of non-tobacco granulated particles in the aerosol-generating substrate in an increasing gradient density towards a longitudinal central axis of the aerosol-generating article, as taught by Mishra, in order to obtain this benefit.
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 COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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 H Wilson can be reached at (571)270-3882. 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.
/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747