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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/15/2026 has been entered.
Status of the Claims
Claims 1-3, 6-11, 13-21, and 23-24 are pending. Claims 10-11, 13, and 2 are withdrawn. Claims 1, 6, 10 have been amended. Claims 23 and 24 are new.
Response to Arguments
Applicant’s arguments, see pages 6-8 of Remarks filed 6/15/2026, with respect to the rejection of claim 1 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. The Applicant has amended claim 1 to include limitations that were not previously presented and are not anticipated by Plattner. Therefore, the rejection has been withdrawn. However, upon further consideration, new grounds of rejection are made in view of newly found prior art Ricketts in combination with previously presented prior art Plattner.
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 1-2, 6-8, 17-21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1, a copy of which was included with the IDS dated 12/22/2022) in view of Ricketts et al. (US 2018/0297048 A1).
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 an aerated foam maxtrix ("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 aerated foam matrix, wherein the plurality of non-tobacco granulated flavour particles includes a flavour (“a flavor, e.g. menthol”, Page 4, Lines 16-19).
However, Plattner does not explicitly disclose wherein the plurality of non-tobacco granulated flavour particles includes a shell of a gel of a polysaccharide containing a flavour, the shell having a hardened surface in contact with the aerated foam matrix, and wherein the plurality of non-tobacco granulated flavour particles incorporated in the aerated foam matrix inhibits a release of the flavour.
Ricketts, in the same field of endeavor, teaches containing a flavour (“flavour . . . such as menthol”, ¶ 0044), with a shell of a gel of a polysaccharide (“gelatine based formulations” comprising “plant polysaccharides”, ¶ 0031), the shell having a hardened surface (“hard shell”, ¶ 0031) and inhibiting a release of the flavour (¶ 0018, 0020). Ricketts teaches benefits of this shell in that it seals its contents for controlled release at a desired time (¶ 0018, 0020). 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 contained flavour of the plurality of non-tobacco granulated flavour particles taught by Plattner with the shell of a gel of a polysaccharide taught by Ricketts, in order to obtain this benefit. In the article of the combination, the hardened surface of the shell is in contact with the aerated foam matrix, and the plurality of non-tobacco granulated flavour particles incorporated in the aerated foam matrix inhibits a release of the flavour.
Regarding claim 2, Plattner in view of Ricketts teaches 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 6, Plattner in view of Ricketts teaches the aerosol-generating article according to claim 1, as stated above. Ricketts further teaches wherein the gel of the polysaccharide contains no gelling agent (the examiner notes that because polysaccharides themselves act as gelling agents, “the gel of the polysaccharide contains no gelling agent” is interpreted as the gel contains no additional, non-polysaccharide gelling agent added to the gelling agent of the polysaccharide itself; this is consistent with Applicant’s specification which discloses “a polysaccharide without adding any gelling agent”, Page 5, Line 21; Ricketts discloses “gelatine based formulations” comprising “plant polysaccharides” and “gelling agents” that may include “starch”, which is also a polysaccharide, ¶ 0031, so the combination of 9999“plant polysaccharides” and “starch” of Ricketts is considered as forming a composite polysaccharide with no additional non-polysaccharide gelling agent; this combination of starch and another polysaccharide is consistent with Applicant’s specification which discloses that the polysaccharide can be “a composition system of combined two or more components” which include “starch”, Page 10, Lines 9-14).
Regarding claim 7, Plattner in view of Ricketts teaches the aerosol-generating article according to claim 1, as stated above. Ricketts further discloses wherein each of the granulated flavour particles has a mean diameter of between 0.1 mm and 3 mm (“between about 1 mm and about 2 mm”, ¶ 0038). The range between about 1 mm and about 2 mm falls within the claimed range of between 0.1 mm and 3 mm (MPEP § 2131.03).
Regarding claim 8, Plattner in view of Ricketts teaches 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 17, Plattner in view of Ricketts teaches 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 in view of Ricketts teaches 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)).
Regarding claim 19, Plattner in view of Ricketts teaches the aerosol-generating article according to claim 1, as stated above. Ricketts further discloses wherein each of the granulated flavour particles has a mean diameter of between 0.5 mm and 2 mm (“between about 1 mm and about 2 mm”, ¶ 0038). The range between about 1 mm and about 2 mm falls within the claimed range of between 0.5 mm and 2 mm (MPEP § 2131.03).
Regarding claim 20, Plattner in view of Ricketts teaches the aerosol-generating article according to claim 1, as stated above. Ricketts further discloses wherein each of the granulated flavour particles has a mean diameter of between 1 mm and 2 mm (“between about 1 mm and about 2 mm”, ¶ 0038). As Ricketts 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 Ricketts 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 Ricketts 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).
Regarding claim 21, Plattner in view of Ricketts teaches the aerosol-generating article according to claim 1, as stated above. Plattner further discloses wherein the aerated foam matrix is a whipped, aerated foam matrix (“whipped”, Page 8, Line 7).
Regarding claim 23, Plattner in view of Ricketts teaches the aerosol-generating article according to claim 1, as stated above. Plattner further discloses wherein the aerated foam matrix further includes 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).
Claims 3 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1) in view of Ricketts et al. (US 2018/0297048 A1) as applied to claim 1 above, and further in view of Narasimhan et al. (US 2021/0315261 A1).
Regarding claim 3, Plattner in view of Ricketts teaches 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 flavour particles 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 flavour particles 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 flavour particles in the aerosol-generating substrate 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 in view of Ricketts teaches 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 flavour particles 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 flavour particles 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 flavour particles in the aerosol-generating substrate 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 in view of Ricketts teaches 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 flavour particles 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 flavour particles 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 flavour particles in the aerosol-generating substrate 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 in view of Ricketts teaches 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 flavour particles 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 flavour particles 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 flavour particles in the aerosol-generating substrate 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 9 is rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375 A1) in view of Ricketts et al. (US 2018/0297048 A1) as applied to claim 1 above, and further in view of Mishra et al. (US 2019/0075838 A1).
Regarding claim 9, Plattner in view of Ricketts teaches 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
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/COURTNEY G CULBERT/Examiner, Art Unit 1747
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