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 29 April 2026:
Claims 1-11 and 14 are pending
Claims 1-5 are withdrawn
Claim 6 is amended
Claim 12 and 13 are cancelled
Response to Amendment
Applicant's amendments to the claims filed 29 April 2026 have been acknowledged. The drawing objection is withdrawn due to amendments of the drawings.
Response to Arguments
Applicant's arguments filed 29 April 2026 have been fully considered but they are not persuasive.
On Pages 6-8 of Applicant’s Remarks, Applicant as amended Claim 6 to further recite “the tobacco medium portion comprises menthol, a flavoring agent, propylene glycol (PG), and vegetable glycerin (VG)” and argues that Selby does not disclose the tobacco medium comprising these components.
Examiner respectfully disagrees because Selby’s disclosure lists tobacco as a non-liquid aerosol generating material which Examiner has mapped to the HNB stick component. Upon further review, it is noted that Selby states that a non-liquid aerosol generating material (i.e., the tobacco medium) can be combined with other non-liquid and/or liquid aerosol generating material, wherein such liquid materials can be propylene glycol (PG) and vegetable glycerin (VG) [0039-0040].
Furthermore, this can also extend to menthol because Selby also notes that a liquid generating material can comprise flavoring agents, wherein it is noted that menthol is a flavoring agent [0032, 0038-0039]. Since Selby’s disclosure indicates that flavoring agents such as menthol is a component in liquid aerosol-generating materials, and also states that liquid materials can be combined with non-liquid materials to create a non-liquid aerosol generating material, one ordinarily skilled in the art would reasonably conclude that flavoring agents such as menthol can be added to a non-liquid tobacco material to yield a non-liquid aerosol-generating material that will predictably produce aerosol for user inhalation.
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 6-7, 9-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Selby et al (Publication No. US20230058955A1) in view of Han et al (Publication No. KR20180111460A, see provided English translation) and Arnold (Publication No. US20170112182A1).
Regarding Claim 6, Selby discloses an aerosol generating system ([0032-0033]; ECIG System) comprising:
an aerosol generating stick (Fig. 1; [0040]; HNB Stick 120);
the aerosol generating stick (120) comprising a tobacco medium portion and a filter portion ([0034-0036, 0040]; discloses that the system utilizes standard HNB components, wherein the HNB stick typically comprises an aerosol-generating material such as tobacco and a filter).
an aerosol generating device (100/800) (see Figs. 1, 8; the aerosol generating device in Figures 1 and 8 are considered equivalent as they accept similar HNB stick components);
wherein the aerosol generating device (100/800) comprises an aerosol generating stick accommodating groove (see Fig. 8; [0052]; Chamber 823);
and a heater configured to heat the aerosol generating stick (120) ([0052]; discloses that there is at least one heating element disposed about the HNB stick to heat said stick);
wherein the tobacco medium portion comprises propylene glycol (PG) and vegetable glycerin (VG) [0039-0040]; discloses that the HNB stick can comprise of tobacco; notes that a non-liquid aerosol generating material can comprise of tobacco or any combination of non-liquid components with liquid components to form a non-liquid form/material; this implies that the HNB stick comprising tobacco non-liquid material can be combined with other disclosed liquid materials such as PG, VG);
wherein the aerosol generating stick (120) is inserted in the aerosol generating stick accommodating groove (823) (Figs. 1, 8; [0052]);
wherein the aerosol generating stick (120) and cartridge (110) are used in combination ([Abstract, 0040, 0052); the disclosed device is a hybrid system that incorporates/combines both the HNB stick 120 and ECIG pod 110 components);
and a cartridge (ECIG Pod 110) comprising a liquid storage (i.e., liquid reservoir) comprising an aerosol generating material (i.e., liquid nicotine) (Fig. 1; [0032-0033, 0040]);
and further comprising an atomizer configured to generate an aerosol (i.e., vapor) from the aerosol generating material (i.e., liquid aerosol generating material) ([0033, 0039-0040]; discloses that ECIG Pods typically comprise an atomizer component);
wherein the aerosol generating material comprises menthol, a flavoring agent, propylene glycol (PG), and vegetable glycerin (VG) ([0032, 0038-0039]; discloses that the liquid aerosol generating material can contain flavors, wherein menthol is specifically mentioned as one flavor that can be potentially present in said liquid);
Selby does not explicitly disclose the following:
the aerosol generating stick comprising a plug located on an end of the aerosol-generating stick opposite to the filter portion;
wherein a content of the menthol in the aerosol generating material is 0.9 wt% to 4.0 wt% and a content of the VG in the aerosol generating material is 80 wt% to 59 wt%;
wherein the tobacco medium portion comprises menthol and a flavoring agent.
Regarding (I), Han, directed to a cigarette (i.e., aerosol-generating stick) used in an aerosol-generating device, discloses said cigarette comprises a tobacco rod (820) (i.e., tobacco medium), filter portion/segment (Third filter segment 840) and a plug (First filter segment 810) located on the end of the cigarette opposite to the filter portion (see Fig. 4; [0012-0013; 0018-0019]; filter segment is shown to be a solid cylindrical component, considered equivalent to a plug).The tobacco rod/medium is wrapped by a second wrapper (860) and first filter/plug which prevents liquid substances generated from the cigarette from leaking out (Fig. 4; [0019]).
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 stick (i.e., cigarette) disclosed by Lee to include a filter/plug on a cigarette/stick end opposite to the filter portion as disclosed by Han, as both are directed to a cigarette heated by an aerosol generating system, where Han teaches the advantage of using a filter/plug opposite to the filter portion to prevent liquid substances generated from the cigarette from leaking out (Fig. 4; [0019]); this also involves applying a known teaching of adding another filter portion/plug to a similar cigarette product to yield predictable results.
Regarding (II), Arnold, directed to a nicotine composition for vaping devices, discloses that the amount of menthol in the vaping solution composition (i.e., aerosol generating material) can range from 0 wt% to about 40 wt% ([0009, 0063]; disclosed range is for a flavoring agent which menthol is considered as one; disclosed range overlaps with the claimed range of 1.8 wt% to 3.6 wt%);
and a content of VG (i.e., glycerin) ranges from 0 wt% to about 99 wt% ([0053, 0064]; disclosed glycerin range is for disclosed range overlaps with the claimed range of 60 wt% to 70 wt%).
The claimed ranges for menthol (i.e., flavoring agent) and VG overlap with the range disclosed by Arnold and are therefore considered prima facie obvious (See MPEP § 2144.05.I).
Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention, to create an aerosol-generating material/liquid (i.e., nicotine solution) to have a content of menthol and VG within the overlapping claimed ranges disclosed by Arnold, with a reasonable expectation that the resulting aerosol-generating material/liquid will be capable of being utilized in an aerosol-generating system to be heated and generate aerosols.
Regarding (III), it should be noted that while Selby does not directly list flavoring agents or menthol in a tobacco material, it is generally disclosed that non-liquid materials (i.e., tobacco) can be saturated with liquid aerosol generating materials can be combined material to form a non-liquid material for producing emissions (i.e., the HNB stick article).
In that regard, Selby has already disclosed that a liquid aerosol generating material can contain flavors, wherein menthol is specifically mentioned as one flavor that can be potentially present in said liquid [0032, 0038-0039]. As such, one ordinarily skilled in the art would reasonably conclude from Selby’s disclosure that a liquid aerosol-generating material comprising menthol flavoring can be incorporated into a tobacco medium non-liquid material to form a tobacco material for an HNB stick that comprises PG, VG, flavoring agents and menthol that will predictably result in the stick being capable of heating and emitting aerosols for inhalation.
Regarding Claim 7, Selby further discloses the aerosol generating device (100/800) further comprises a battery ([0032-0034; batteries are a common component in ECIG systems).
Selby does not explicitly disclose that the aerosol generating device (100/800) comprises a controller and a detector. However, it should be noted that Selby does disclose other embodiments of the hybrid ECIG system that utilizes similar HNB and ECIG Pod components, wherein said components operate in conjunction with a microphone sensor (i.e., detector) and controller for detecting user draw and operating heating elements [0062, 0065].
Therefore, one ordinarily skilled in the art would make the obvious modification to add the detector/sensor and controller from Selby’s other embodiments to the device disclosed in Figures 1 and 8 to predictably result in said device embodiments having the capability of detecting user draw and operating the heating elements of the system.
Regarding Claim 9, Han further discloses plug is a cellulose acetate filter (Fig. 4; [0100]).
Regarding Claim 10, Selby further discloses the aerosol generating system (ECIG system) is a heat-not-burn type [0002-0004].
Regarding Claim 11, Arnold further discloses flavoring agent comprises at least one selected from a group consisting of mint, tobacco flavor, fruit flavor component, and coffee ([0063]; discloses that flavors/flavoring agents can be derived from mint, tobacco, fruit and coffee).
Regarding Claim 14, Selby further discloses the atomizer comprises a liquid delivery means (i.e., wick) for absorbing the aerosol generating material ([0032-0033]; discloses that a wick is a common component in ECIG pods for conveying liquid to the vaporizing chamber, heating element, or atomizer to generate aerosols/vapor);
and a heater (i.e., heating element) configured to generate the aerosol (i.e., vapors) ([0032-0033, 0052]; the ECIG pod comprises a heating element for generating aerosol/vapor from the aerosol generating liquid conveyed by the wick).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Selby et al (Publication No. US20230058955A1) in view of Han et al (Publication No. KR20180111460A, see provided English translation) and Arnold (Publication No. US20170112182A1) as applied to Claim 6 above, and further in view of Newman et al (Publication No. US20050172976A1).
Regarding Claim 8, Modified Selby does not disclose the tobacco medium portion (81) comprises a carrier for carrying the flavoring agent.
However, Newman, directed to an electrically heated cigarette (i.e., aerosol-generating stick), discloses the cigarette (23) comprises a filter tipping (62) (i.e., filter section) and a tobacco rod (60) (i.e., tobacco medium portion) made of tobacco mats and plugs (Figs. 1-2; [0031-0032]). Flavoring agents such as menthol, mint, linool, chocolate, or licorice is applied to the tobacco mat and/or plug using a host molecule inclusion complex such as cyclodextrin (i.e., carrier), which protects the flavoring from exposure to undesired substances in the cigarette and minimizing migration of the flavoring until the flavoring is released via heating [0065-0076].
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 tobacco medium portion disclosed by Modified Selby to include a carrier as disclosed by Newman, as both are directed to an aerosol-generating stick (i.e., cigarette) heated by an aerosol-generating/smoking system, where Newman teaches the advantage of using a host molecule inclusion complex carrier to protect the flavoring from exposure to undesired substances in the cigarette, and minimizing migration of the flavoring until the flavoring is released via heating [0065-0076].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lord et al (Publication No. US20210244077A1) – An HNH aerosol-forming article consumable comprising reconstituted sheets of tobacco substrate, wherein said substrate further comprise additives such as propylene glycol, vegetable glycerin, and flavorants such as menthol.
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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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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/V.P./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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