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 .
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.
Response to Amendment
Claims 1-2, 6-7, 10, 12, 14, 16-17 and 19 are amended. Claims 13 and 15 are canceled. Claims 34-35 are newly added. Claims 3 and 29-32 were previously withdrawn due to a restriction requirement; withdrawn claim 3 is amended.
Response to Arguments
Applicant’s amendments and arguments filed November 7, 2025 with respect to the rejection of Claims 6 and 19 under 35 U.S.C. 112(b) have been fully considered and are persuasive. Said rejection has been withdrawn.
Applicant’s amendments and arguments filed November 7, 2025 with respect to the rejection of claims under § 102 due to amending Claim 1 have been fully considered and are persuasive. Said rejection has been withdrawn.
Upon further consideration and due to the amendments, new grounds of rejection are presented herein over previously cited prior art in view of Aoun et al. (US 2018/0279666).
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 1-2, 10, 4-5, 14-28, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (WO 2020089078, cited in 1/31/2023 IDS) in view of Aoun et al. (US 2018/0279666).
Regarding claims 1-2 and 10: Lord discloses an aerosol-forming article (reads over a consumable of Claim 1) for use in a heat-not-burn (non-combustible) aerosol-provision system (abstract, p 1, lines 3-4; p 3, lines 1-5; p 8, lines 25-28). The consumable comprises a rod shape having a plurality of segments between a first end and a second end, including an aerosol-generating segment (2) comprising an aerosol-generating material (Fig. 1, p 10, lines 2-8) and an aerosol-cooling segment 6 (p 10, lines 12-13 and 23-24). The aerosol-cooling segment (6) can be formed of a gathered and crimped sheet of reconstituted tobacco (p 4, lines 12-14; p 10, lines 23-26). This reads over the amorphous solid material of Claim 1, the rod limitation of Claim 2, and the crimped limitation of Claim 10.
Lord also discloses the aerosol-cooling segment (6) may be formed of extruded plant material (e.g., extruded tobacco) by forming a liquid mixture of powdered tobacco and a binding agent such as a gum (e.g., xanthan, guar, Arabic and/or locust bean gum), heating the mixture, extruding the mixture through a die, drying the extrudate and cutting the extrudate into pellets, chips, or granules (p 4, lines 15-21). The extruded and dried product also reads over an amorphous solid material. The disclosed binders read over a gelling agent (Claim 1)
Lord does not explicitly disclose the gelling agent wt% and the aerosol-former material limitation.
Aoun teaches aerosol generating material and devices including the same (Title). The aerosol generating material may be heated to emit an inhalable aerosol ([0026]). Specifically, the aerosol generating material is a solid aerosol generating material (reads over amorphous solid material) comprising about 5-35 wt % tobacco extract; about 50-80 wt % filler; about 10-35 wt % aerosol generating agent (reads over aerosol-former material); and about 2.5-10 wt % binder (reads over gelling agent); wherein weight percentage is calculated on a dry weight basis ([0027], [0046-0047], [0049-0050]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include about 2.5-10 wt% binder and about 10-35 wt% aerosol generating agent in the amorphous solid material of Lord as taught by Aoun to provide an inhalable aerosol to the user when the aerosol generating material is heated.
The prior art wt% binder range is encompassed by the claimed gelling agent range of 1 to 60 wt% and the prior art aerosol generating range is overlapped by the claimed range of 10 to 75 wt% aerosol-former material. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Regarding claims 4 and 5, Lord discloses the aerosol-forming substrate may comprise a gathered sheet of homogenized tobacco or gathered strips formed from such a sheet (p 6, lines 1-2). Lord further teaches the aerosol-forming substrate may comprise the same or different type or form of plant material as the aerosol-cooling segment (Lord p 6, lines 11-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Lord and provide the aerosol-cooling segment in the form of gathered strips formed from such a sheet as a functionally equivalent option. This represents the simple substation of known aerosol-forming substrate material for the predictable result of gathered strips formed of homogenized tobacco. This reads over Claim 4.
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
The strips also provide a plurality of longitudinal channels and a high surface area to maximize heat exchange, as desired by Lord (Lord p 4, lines 13-14). Aligning the strips with the longitudinal axis of the consumable would have been obvious to try as one of a very limited number of choices absent convincing evidence of unexpected results. The longitudinal alignment further supports the desire for a plurality of longitudinal channels and a high surface area to maximize heat exchange as desired by Lord and also would be expected to reduce the pressure drop across the aerosol-cooling segment so as to minimally interfere with drawing on the consumable by a user. This reads over Claim 5.
Regarding claim 14, Lord discloses an extruded and dried product as discussed in claim 1 rejection. Lord discloses the extruded and dried tobacco sheet comprises binders such as gums (e.g., xanthan, guar, Arabic and/or locust bean gum). Other disclosed binders include starches, ethyl cellulose, methyl cellulose, hydroxypropyl cellulose, hydroxyethyl cellulose, organic acids and their salts, sodium alginate, agar, and pectin (p 6, lines 13-14, and line 27 - p 7, line 2). The disclosed binders reads over the claimed gelling agent list (Claim 14).
Regarding claim 16, Lord discloses the aerosol-forming substrate comprises a humectant such as propylene glycol, glycerol, glycerine, glycerol tri-acetate, etc. (p 6, lines 13-18), which provides vapor to help carry the volatile active compounds and increase visible vapor. Since the aerosol-cooling substrate can be the same as the aerosol-forming substrate (p 6, lines 11-12), including the humectants, which include claimed species of aerosol-former materials, in the aerosol-cooling substrate would have been obvious to provide the same vapor benefits.
Regarding claims 18 and 19, Lord discloses the aerosol-forming substrate (e.g., aerosol-generating material) preferably comprises tobacco (reads over Claim 18), which is a paper reconstituted tobacco material (reads over Claim 19) in some embodiments (p 5, lines 23-31; p 10, lines 4-5).
Regarding claim 20, Lord discloses a downstream (terminal) filter element (5) (reads over a mouthpiece segment) (Fig. 1, p 10, line 11).
Regarding claim 21, Lord discloses filter element (5) is formed of cellulose acetate tow (reads over a body of fibrous material) (p 10, lines 13-14).
Regarding claim 22, Lord discloses filter element (5) is a hollow bore filter element with a hollow, longitudinally extending bore (reads over a hollow tubular element) (Fig. 1, p 10, line 20).
Regarding claim 23, Lord discloses filter elements (4, 5) comprise a hollow bore (reads over hollow tubular element) (p 10, line 20).
Regarding claim 24, see claim 21 rejection. Cellulose acetate tow reads over filamentary tow.
Regarding claim 25, Lord discloses upstream filter element (4) is positioned between the aerosol-cooling segment (6) and the aerosol-generating segment (2) (see Fig. 1). This reads over the hollow tubular element position.
Regarding claim 26, modified Lord discloses all the limitations as set forth above. Lord does not explicitly disclose the at least one section of amorphous solid material and the at least one portion comprising the aerosol-generating material are directly adjacent one another.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to practice the invention of modified Lord with the aerosol-cooling segment (6) and the aerosol-generating substrate (2) located/position adjacent each other since it has been held that rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
One of ordinary skill in the art would have a reasonable expectation of success in the above modification since Lord teaches, the skilled person will appreciate that except where mutually exclusive, a feature or parameter described in relation to any one of the above aspects may be applied to any other aspect. Furthermore, except where mutually exclusive, any feature or parameter described may be applied to any aspect and/or combined with any other feature or parameter described herein (p 9, lines17-20). Therefore, Lord is open to the aerosol-cooling segment (6) being positioned upstream of the aerosol-generating substrate (2) as Lord does not describe any criticality relative to the position of the aerosol-cooling segment (6) and the aerosol-generating substrate (2).
Regarding claim 27, modified Lord discloses all the limitations as set forth above. Modified Lord does not explicitly disclose the at least one section of amorphous solid material is upstream of the at least one portion comprising the aerosol-generating material.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to practice the invention of modified Lord such that the aerosol-cooling segment (6) is upstream of the aerosol-generating substrate (2), since it has been held that rearrangement of parts where both arrangements are known equivalents is a design choice that gives predicable results. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). One of ordinary skill in the art would have a reasonable expectation of success in the above modification since Lord teaches, the skilled person will appreciate that except where mutually exclusive, a feature or parameter described in relation to any one of the above aspects may be applied to any other aspect. Furthermore, except where mutually exclusive, any feature or parameter described may be applied to any aspect and/or combined with any other feature or parameter described herein (p 9, lines17-20). Therefore, Lord is open to the aerosol-cooling segment (6) being positioned upstream of the aerosol-generating substrate (2) as Lord does not describe any criticality relative to the position of the aerosol-cooling segment (6) and the aerosol-generating substrate (2). This reads over Claim 27.
Regarding claim 28, Lord discloses the aerosol-cooling segment (6) is downstream from the aerosol-forming substrate (2) (Fig. 1, p 7, line 19). This reads over Claim 28.
Regarding claim 35, Lord discloses in preferable embodiments, the aerosol-forming substrate comprises tobacco, which is a paper reconstituted tobacco material (p 5, lines 23-31; p 10, lines 4-5). This reads over Claim 35.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (WO 2020089078) in view of Aoun et al. (US 2018/0279666) as applied to claim 1 above, and further in view of Zuchuat et al. (US 2018/0116274)
Modified Lord discloses all the claim limitations as set forth above.
Regarding claim 6, see claim 1 rejection. Modified Lord does not explicitly disclose an amorphous solid material thickness.
Zuchuat teaches a tobacco cut filler comprises a first tobacco material cut in accordance with a first cut specification, wherein the first cut specification sets at least predetermined first cut width and first cut length (abstract). The tobacco cut filler may be incorporated into a variety of smoking articles and may be used to provide the tobacco aerosol generating substrate in an electrically heated smoking system (¶[0054]). Zuchuat further teaches the strips have been cut from a sheet of reconstituted tobacco (i.e., an amorphous solid material) having a thickness of from about 0.05 mm to about 1 mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Lord to include aerosol-cooling segment sheet material (Lord’s amorphous solid) thickness to be from about 0.05 mm to about 1 mm which as taught by Zuchuat for use in an electrically heated smoking system as the range of Zuchuat overlaps the claimed range.
Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable. This reads over Claim 6.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (WO 2020089078) in view of Aoun et al. (US 2018/0279666) as applied to claim 1 above, and further in view of Ghanouni (US 2021/0298358).
Modified Lord discloses all the claim limitations as set forth above.
Regarding claims 7-9, modified Lord does not explicitly disclose the amorphous solid material provided on a supporting material (Claim 7); supporting material is paper or foil (Claim 8); the susceptor material comprises a susceptor (Claim 9).
Ghanouni teaches a method of generating aerosol from an aerosol-generating substrate using an aerosol-generating device (abstract). In some cases, the substrate comprises an amorphous solid (¶[0104] and the aerosol-generating device may be a heat-not-burn device (¶[0105]). The aerosol-generating substrate may additionally comprise a carrier (reads over supporting material of Claim 7) on which the amorphous solid is provided. This carrier may ease of manufacture and/or handling, for example, (a) providing a surface onto which the slurry may be applied (e.g., by casting, spraying, or extruding), (and which the slurry does not need to be separated from later), (b) providing a non-tacky surface for the aerosol-generating material, (c) providing some rigidity to the material (¶[0165]). The carrier may be formed from materials selected from metal foil, paper, carbon paper, greaseproof paper, ceramic, carbon allotropes such as graphite and graphene, plastic, cardboard, wood, or combinations thereof (¶[0166]), which reads over the material list of Claim 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Lord with the amorphous solid material (Lord’s aerosol-cooling segment/element) provided on a carrier formed from metal foil or paper, or combinations thereof as taught by Ghanouni. One of ordinary skill in the art would have a reasonable expectation of success in making such modification with predictable results such as ease of manufacture and/or handling by providing (a) a surface onto which the slurry may be applied (e.g., by casting, spraying, or extruding), (b) providing a non-tacky surface for the aerosol-generating material, and (c) providing some rigidity to the material. This reads over Claims 7 and 8.
Additionally, Ghanouni teaches in some cases the carrier is formed from or comprises metal foil, such as aluminum foil which may allow for better conduction of thermal energy to the amorphous solid and additionally, a metal foil may function as a susceptor in an induction heating system (¶[0173]).
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Lord to have amorphous solid material (Lord’s aerosol-cooling segment/element) provided on a carrier comprising metal foil, such as aluminum foil which may function as a susceptor in an induction heating system as taught by Ghanouni. One of ordinary skill in the art would have a reasonable expectation of success in making such modification with predictable results such as better conduction of thermal energy to the amorphous solid of Lord. This reads over Claim 9.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (WO 2020089078) in view of Aoun et al. (US 2018/0279666) as applied to claim 1 above, and further in view of Kim et al. (KR 20190083314, cited in IDS 1/31/2023, U.S. equivalent 2021/0051993 relied upon).
Modified Lord discloses all the claim limitations as set forth above. Modified Lord further teaches the aerosol-cooling element material may comprise pellets, granules, or chips of extruded plant material/tobacco which will cause a high surface area for heat exchange (Lord p 4, lines 15-17).
Regarding claims 11 and 12, modified Lord does not explicitly disclose beads of amorphous solid material (Claim 11) and a hollow tube of beads to form at least one section of amorphous solid material (Claim 12).
Kim teaches an aerosol-generating article may be fabricated in the form of a bead and may be formed in various sizes (abstract). A bead may be included in a cigarette and/or incorporated in a cartridge wherein the bead may be heated by an electric heater to generate aerosol. The aerosol-generating article retains the shape of a bead at the room temperature and may be fabricated by using agar, glycerin, and water. The aerosol-generating article retains the shape of a bead until being liquified or vaporized by a heater. In other words, the aerosol-generating article does not include a separate outer membrane (outer shell) to retain the shape of the bead and naturally has the shape of the bead as the materials (forming the bead) are mixed and dried. Therefore, no residue remains after the aerosol-generating article is liquified or vaporized. (¶[0038]). Kim further teaches glycerin is an aerosol-generating material (¶[0062]). This reads over beads of amorphous solid material of Claim 11.
Kim further teaches a cigarette (100) (i.e., a consumable) includes a front-end plug (110), a bead accommodating portion (120), a tobacco accommodating portion (130), and a filter (140), the bead accommodating portion (reads over a hollow tube) includes at least one bead. When a plurality of beads are accommodated in the bead accommodating portion (120), the plurality of beads may be arranged regularly or irregularly. (¶[0055]). This reads over beads are located in a hollow tube to form at least one section of amorphous solid material of Claim 12.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Lord to have the aerosol-cooling segment material formed of a plurality of beads as taught by Kim which will generate an aerosol when heated by a heater. One of ordinary skill in the air would have a reasonable expectation of success with predictable results, such as aerosol generation from the volatile materials in the beads upon heating in a heat-not-burn article such as in Lord.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (WO 2020089078) in view of Aoun et al. (US 2018/0279666) as applied to claim 1 above, and further in view of Besso (US 2020/0229506).
Modified Lord discloses all the claim limitations as set forth above.
Regarding claim 17, modified Lord does not explicitly disclose the amorphous solid material comprises a flavorant.
Besso teaches an aerosol-generating article comprising an aerosol-generating segment (10) comprising a gathered crimped sheet of homogenized tobacco material and an aerosol-cooling element (14) comprising a gathered sheet of biodegradable polymeric material (i.e., amorphous solid material), and a transfer element (12) between the aerosol-generating segment and the aerosol-cooling element (14) (Fig. 1, ¶[0101, ¶[0105], ¶[0107]). In some embodiments, the aerosol-cooling element comprises a flavorant or chemesthetic agent (¶[0094]), such as menthol that provides a chemesthetic cooling effect (¶[0096]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Lord to include a flavorant such as menthol in the amorphous solid material of Lord as taught by Besso to provide a desired taste or chemesthetic cooling effect to a user. This reads over Claim 17.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Lord et al. (WO 2020089078) in view of Aoun et al. (US 2018/0279666) as applied to claim 1 above, and further in view of Emmett et al. (US 2020/0221767).
Modified Lord discloses all the claim limitations as set forth above.
Regarding claim 34, modified Lord does not explicitly disclose a thickness of between about 1 mm and about 2 mm.
Emmett teaches a flat aerosol-generating article is a strip (10) of an aerosol-forming substrate, preferably a rectangle (a strip) cut from a tobacco containing cast leaf (reads over amorphous solid material). A thickness (102) of the strip may be in a range between 0.5 mm and 2 mm (Fig. 1, [0095]). For clarity of the record, the Examiner notes [0095] cites “thickness (202)” which is in error when compared to Fig. 1 and [0096] which cites “the thickness (102) of the flat article”. Further, [0097] cites “the height (202) of the corrugated sheet (20)”. See Figs 1 and 2 reproduced below.
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Lord to include aerosol-cooling segment sheet material (Lord’s amorphous solid) thickness to be between 0.5 mm and 2 mm as the range of Emmett overlaps the claimed range.
Absent a showing of unexpected results, it would have been obvious to one of ordinary skill in the art to select any point within the range taught by the prior art. One of ordinary skill in the art would reasonably expect any value within the taught range to be suitable given that the prior art specifically teaches the range to be suitable. This reads over Claim 34.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONNIE KIRBY JORDAN whose telephone number is 571-272-5214. The examiner can normally be reached M-F 8AM - 4PM (EST).
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/KATHERINE A WILL/Primary Examiner, Art Unit 1747