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 1-3, and 5-7 are pending and are subject to this office action. Claims 1 is amended, claim 4 is canceled, and claim 7 is withdrawn from consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/04/2026 has been entered.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 05/04/2026 containing amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pg. 4-5, filed 05/04/2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claim 1 to require that the semi-solid medium part has a pH of 7 or more which was not previously presented. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of a combination of previously applied prior art and newly found prior art.
On pg. 4-5, Applicant argues the cigarette paper (522, Fig. 5) of Fujita does not meet the claimed paper tube part because the cigarette paper (522) is filled with tobacco material and does not include a hollow. The Examiner disagrees. First, the Examiner relied upon the tipping paper (56) as teaching the claimed paper tube part. The tipping paper (56) circumscribes the article forming a tube having a hollow therein. The claim does not require that the hollow be empty or void of material. The Examiner is interpreting the limitation “at one end of the semi solid medium part” as at least a portion of the tube part being positioned at an end of the semi-solid medium part. The claim as written does not require the tube part be positioned at an axial end of the semisolid medium part and immediately downstream of the semi-solid medium part, as in Applicant’s invention shown in Fig. 1 of the specification. Therefore, the tipping paper (56) being positioned at an upper and lower end of the flavorant carrying low adsorbent particles (Fujita: FLAP, Fig. 2, [0014, 0043]) carrying the semisolid aerosol generating material (Richardson: [0079, 0094, 0105-0107]) is considered to be positioned at one end of the semi-solid medium part. However, to advance prosecution, the Examiner has provided an alternative rejection below to that reads on Applicant’s interpretation of the claimed paper tube part provided at an end the semisolid medium part and including a hollow in the center, as shown in Fig. 1 of Applicant’s invention.
On pg. 5, Applicant argues that applying the pore size disclosed by Takano to the porous material disclosed by Fujita is unreasonable because the specific surface area and pore size must be satisfied by a single material. The Examiner does not find the argument persuasive. The Examiner recognizes that the specific surface area and pore size are related properties. However, Fujita and Takano both disclose silica particles. Fujita discloses flavorant carrying low adsorbent particles (FLAP) formed of a low adsorbent core particle (“porous material”), where the core particle may be silica ([0014, 0016, 0043]). Similarly, Takano discloses liquid absorbent granules (34) formed of porous silica gel ([0022]). Fujita discloses the silica particles have a specific surface area of less than 700m2/g ([0015]) but is silent to the pore size. Takano discloses similar silica particles have a minimum pore size of 0.1µm so that the granules can contain a sufficient quantity of nicotine solution (Fig. 6, [0070, 0073]). Therefore, a person having ordinary skill in the art could have reasonably applied the pore size of Takano to the particle of Fujita to arrive at a porous material having a specific surface area and pore size in ranges that overlap with the claimed ranges and are therefore considered prima facie obvious.
The rejections below are maintained and modified where necessitated by Applicant’s amendment.
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.
Claims 1-3, and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (EP 2733193 A1) in view of Takano (US 20060191546 A1), Richardson (US 20240277029 A1), and Gonda (US 20080138423 A1), or alternatively further in view of Ibrahim (US 20180360099 A1).
Regarding claim 1, Fujita discloses a cigarette (50, Fig. 2, [0050]), comprising:
A filter (541, “filter part”, [0041-0042]),
Tipping paper (56, “paper tube part”), and;
Flavorant carrying low adsorbent particles (FLAP) formed of a low adsorbent core particle (“porous material”) having a flavor generating medium adsorbed to the surface ([0014, 0043]).
The low adsorbent core particle (“porous material”) has a specific surface area of less than 700m2/g which exhibits little absorption of components in the mainstream smoke and has a small effect of the smoking flavor ([0015]). The range taught by the prior art overlaps with the claimed range and is therefore considered prima facie obvious.
The flavor generating medium comprises a flavor holding medium which contains the flavor such that it does not volatilize in storage ([0036]).
The tipping paper (56, “paper tube part”) circumscribes the filter (541, [0045]), such that the tipping paper (56) has a hollow in the center and is provided at an end (e.g. an upper and lower end) of the FLAP containing the flavor generating medium.
Fujita does not explicitly disclose the flavor generating medium adsorbed to the core particle (porous material) is a semi solid medium part.
However, Richardson, directed to an aerosol generating composition (abstract), discloses:
An aerosol generating material in the form of a semi-solid such as a gel comprising a gelling agent (“semi-solidifying agent”, [0079]).
The aerosol generating material may comprise an active substance such as nicotine, as well as a flavorant, and an aerosol former ([0079, 0094, 0105-0107]).
Providing the aerosol generating material in the form of a gel allows flavorings to be stabilized and have a good shelf life ([0092]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fujita by substituting the flavor generating medium with the gel/semisolid aerosol forming material as taught by Richardson because both Fujita and Richardson are directed to aerosol generating articles, Fujita discloses the flavor generating medium prevents volatilization of flavors in storage, Richardson discloses a gel aerosol generating material formed with a gelling agent which allows stabilization of flavors in storage, and this involves applying a known gel aerosol forming material to a similar aerosol generating article to yield predictable results.
Richardson discloses the aerosol generating material is capable of generating an aerosol when heated, irradiated, or energized in another way ([0079]). A “non heating type smoking article” is interpreted as a smoking article that can generate an aerosol without heating. Therefore, the cigarette (50) disclosed by Fujita comprising the aerosol generating material ([0079]) disclosed by Richardson is considered to be a non-heating type smoking article as the aerosol generating material is capable of generating an aerosol without heating.
Fujita or Richardson do not explicitly disclose the pores of the porous material have an average maximum diameter of 0.01 to 1.5mm.
However, Takano, directed to a nicotine holder (1, Fig. 6), discloses:
Liquid absorbent granules (34) filled with a nicotine solution, the liquid absorbent granules (34) having an average diameter of 0.1µm or more so that the granules can contain a sufficient quantity of nicotine solution (Fig. 6, [0070, 0073]).
Takano does not explicitly disclose the average maximum diameter value of the pores. The average maximum diameter value is interpreted as the average diameter of the largest pores in the porous material. A person having ordinary skill in the art would reasonably expect granules having pores with an average diameter of greater than 0.1µm to include embodiments where the average maximum diameter value of the pores overlaps with the claimed range of 0.01 to 1.5 mm and is therefore considered prima facie obvious. Applicant has not shown that the claimed average maximum diameter value of 0.01 to 1.5mm has unexpected and superior results, and thus the prior art teaching of a diameter range that overlaps the claimed range would reasonably read on embodiments in which an average maximum diameter may overlap said claimed range. If the applicant were to persuasively demonstrate criticality and unexpected results of the claimed range, the rejection would most likely be overcome.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fujita, in view of Richardson, by providing the granules with an average pore size of 0.1µm or more as taught by Takano, because both Fujita and Takano are directed to aerosol generating articles, Takano discloses an average pore size of 0.1µm or greater allows the granules to hold a sufficient quantity of nicotine solution, and this involves applying a known average pore diameter to an absorbent material in a similar aerosol generating article to yield predictable results.
Richardson is silent to the pH of the aerosol generating material (“semisolid medium part”).
However, Gonda, directed to nicotine formulation for generating an aerosol ([0092]), discloses”
The formulation may be in semisolid form ([0092]), and;
It is desirable to have a formulation with a basic pH (i.e. a pH greater than 7.0) to increase the absorption of the nicotine from the lung into the circulatory system ([0024]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fujita, in view of Richardson and Takano, by providing the semi solid aerosol generating material with a pH greater than 7 as taught by Gonda, because both Fujita and Gonda are directed to aerosol generating compositions, Gonda discloses a formulation having basic pH increases the absorption of nicotine from the lung into the circulatory system, and this involves applying a known pH of a nicotine formulation to a similar aerosol generating material in a similar aerosol generating article to yield predictable results.
Fujita discloses a tipping paper (56, “paper tube part”) circumscribing the filter (54, [0045]), which is considered to be the claimed paper tube part provided at one end of the semi-solid medium part, as discussed above.
Alternatively, Fujita discloses a plain filter section (543) comprising cellulose acetate ([0044]) provided at the mouth end of the flavorant carrying low adsorbent particles (FLAP, “porous material”) having a flavor generating medium adsorbed to the surface ([0014, 0043]). Richardson discloses an aerosol generating material in the form of a semi-solid such as a gel comprising a gelling agent (“semi-solidifying agent”, [0079]).
Fujita does not explicitly disclose a paper tube part provided at one end of the semi solid medium part.
However, Ibrahim, directed to a smoking article (Fig. 4, [0026]), discloses
A mouthpiece (101) formed of a spirally wound paper tube (“paper tube part”) or cellulose acetate, the mouthpiece being a hollow tube to provide a filtering function to filter volatilized smokable material (Fig. 4, [0116]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Fujita, in view of Richardson, Takano, and Gonda, by substituting the plain filter section at the mouth end with a hollow paper tube as taught by Ibrahim, because both Fujita and Ibrahim are directed to aerosol generating articles, Fujita discloses a mouth end filter section comprising cellulose acetate, Ibrahim discloses a similar mouth end filter section comprising a paper tube or cellulose acetate, and this involves substituting one known mouth filter for another in a similar aerosol generating article to yield predictable results.
Regarding claim 2, Richardson discloses the aerosol generating material may include an aerosol former such as propylene glycol, dipropylene glycol, or triethylene glycol ([0094]).
Regarding claim 3, Richardson discloses the gelling agent comprises one or more of alginate, pectin, starch, cellulose, cellulose derivatives, and combinations thereof ([0082]).
Regarding claim 5, Fujita discloses the low absorbent core particle is formed of silica ([0016]).
Regarding claim 6, Fujita discloses the filter (541) comprises cellulose acetate ([0041-0045]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cabot (US 20220273019 A1) discloses a gel formulation comprising nicotine, where the pH can be varied to impact the relative amount of protonated and unprotonated nicotine in order to provide a nicotine formulation having a desirable flavor and irritation ([0005, 0068, 0075, 0096]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm 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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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
