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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 9-30-2025 is acknowledged.
Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9-30-2025.
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.
Claims 1-8 are 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “slurry” in claim 1-8 is used by the claim to mean “mixture or composition that can be a solid shape, claim 1 requires the crystals to be contained therein and claim 4 requires the slurry to be a solid, e.g., sheet shape or spherical shape, see Claim 4”. (E.g., liquids don’t have shapes) While the accepted meaning is “a heterogenous liquid mixture”.
Its also unclear if the final aerosol generating material product is still in slurry form because the slurry is then processed by papermaking and processing etc., (see instant spec page 7 lines 19-28) however the composition continues to be referred to as “the slurry”; as all the claims refer back to independent claims 1 or 6 which each requires the aerosol generating material be a slurry. The term is indefinite because the specification does not clearly redefine the term. For the purposes of compact prosecution, the term slurry is being interpreted to be a mixture that includes a solid mixture which is consistent with the claims and specification.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Mua (JP 2015504658) submitted by Applicant via IDS 2/13/2024, English translation relied upon provided herein.
Regarding Claim 1, Mua discloses a composition comprising a reconstituted tobacco leaf slurry containing crystals containing a gas therein (See [0013], tobacco material mixed with sugar material with entrapped gaseous components). Although Mua does not explicitly disclose that the tobacco material is tobacco leaf material, Mua teaches the tobacco plant is used as the tobacco material [0037]. Therefore, it would be obvious to a person of ordinary skill in the art to modify the tobacco material to specifically be tobacco leaf as tobacco leaves are part of the tobacco plant, The Examiner notes that the term slurry is being interpreted to be a mixture that includes a solid mixture which is consistent with the claims and specification as set forth in the 112b rejection above. Mua teaches a commercially available gasified sugar material can be used with its teachings called “carbonated crystals” [0021], which is considered to read on the claimed sugar crystals.
Mua differs from the claimed material in that the composition disclosed by Mua is not explicitly disclosed to be used for aerosol generation. However, the preamble’s recitation of “An aerosol generating material” is considered to be directed to the intended use of the material comprising a reconstituted tobacco leaf slurry. The intended use of the material to generate aerosol does not impart any compositional or structural difference to the claimed material, and as discussed above, the Examiner is of the position that Mua makes obvious a compositionally equivalent material as claimed, absent evidence to the contrary.
Regarding Claim 2, Mua teaches the gas is carbon dioxide. (see [0019)
Regarding Claim 3, Mua teaches the sugar crystals are dispersed inside the reconstituted tobacco leaf slurry ( [0013]).
Regarding Claim 4, Mua teaches the reconstituted tobacco leaf slurry has a sheet shape or a spherical shape (see [0061]).
Regarding Claim 5, Mua teaches at least one flavoring agent selected from the group consisting of mint, chocolate, cocoa, coffee, licorice, coriander, vanillin, ethyl vanillin, maltol, ethyl maltol, eucalyptol, acetic acid, breath freshener, incense, spices, bergamot oil, geranium oil, lemon oil, orange oil, lime oil, grapefruit oil, mint oil, ginger oil, Isosweet, and rosemary (e.g., flavorants including vanilla, mint (peppermint, spearmint, wintergreen), chocolate, coffee, licorice, eucalyptus/eucalyptol, and others, see [0049]).
Allowable Subject Matter
Claim 6 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 7-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim 6 and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art is Sanna (WO 2018229087A1) and Mua (JP 2015504658).
Sanna discloses an aerosol-generating article comprising a tobacco medium part (aerosol forming rod segment, see page 16 line 4) and
a filter part (see page 16 line 2), wherein
the tobacco medium part contains an aerosol-generating material (aerosol forming rod segment page 16 lines 4-5), the aerosol-generating material includes a reconstituted tobacco leaf slurry (aerosol forming substrate is reconstituted tobacco cast leaf material, see page 3 lines 19-23),
the filter part includes a cooling part (see page 16 line 2, the cooling element is followed by the filter in the article, although the filter and cooling elements are listed by Sanna as two separate parts, it would be obvious to a person of ordinary skill in the art to modify the filter part to be integrated with or to include the cooling part, with a reasonable expectation of success. “The use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.”) In reLarson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965), see MPEP 2144(V)(B).
Sanna fails to explicitly disclose the reconstituted tobacco leaf slurry contains sugar crystals containing a gas therein.
There is no motivation to combine the article of Sanna with the smokeless composition of Mua or to modify the composition of Mua with a filter part as required by the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael T Fulton whose telephone number is (703)756-1998. The examiner can normally be reached Monday-Friday 7:00 - 4:30 ET.
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/M.T.F./Examiner, Art Unit 1747 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755