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 .
Response to Arguments
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive.
Applicant argues that:
the ginkgoside is not in a consumable for an aerosol provision system that also includes an aerosol-generating material and greater than about 15 wt% water.
breathable cotton is also not "consumable."
Yi Cewei teaches that the components of the medicine on the breathable cotton include ginkgoside,
the mixture of e-cigarette oil and smoking cessation liquid does not include a flavour glycoside.
the mixture of e-cigarette oil and smoking cessation liquid is adsorbed onto the oil-absorbing rope (4).
the smoke oil mixture, which includes the traditional Chinese 'medicine' and is adsorbed onto the rope is different from the 'medicine' in storehouse (12) of the mouthpiece, which includes the ginkgo glycoside. Not only are these formulations located in separate portions of the e-cigarette of Yi Cewei, but they are also subjected to different steps during use of the e-cigarette.
The 'medicine' in the mouthpiece is sprayed onto the breathable cotton and may be picked up in the aerosol as the user inhales. It is not subject to heat from the heating element or in a formulation with "greater than 15 wt% water". In contrast, the 'medicine' in the smoke oil mixture adsorbed onto the rope is directly heated by the heating element.
Yi Cewei has no teaching or suggestion to include 10-20 wt.% water as alleged by the Examiner, let alone the claimed amount of greater than about 15 wt.% water
it has been found that a flavour glycoside obtained from a biotechnological process may comprise fewer impurities than a flavour glycoside obtained using chemical or synthetic methods.
as demonstrated by Example 1 of the application on pages 48 to 49, such flavour glycosides are advantageous over the respective flavorant as such when incorporated in a consumable for an aerosol provision system according to the present invention comprising greater than about 15 wt.% water, for example by having greater solubility in water.
Yi Cewei is also entirely silent about the recited methods of Claims 48 to 51.
Regarding a)-h), the claim term “consumable” is given its broadest reasonable interpretation as follows (Cambridge Advanced Learner's Dictionary & Thesaurus):
“Consumables are goods, especially food or services, that people buy regularly because they are quickly used and need to be replaced often:”
As acknowledged by Applicant, the mixed liquid of electronic cigarette oil and smoking cessation liquid and the medicine filled in the medicine warehouse are intended to be inhaled (consumed) by a user and need to be replaced. As such, the mixed liquid of electronic cigarette oil and smoking cessation liquid and the medicine filled in the medicine warehouse are considered to be consumables that are used for the electronic cigarette (electronic provision system) of Yi Cewei and that need to be replaced. The breathable cotton also qualifies as a consumable because it is apparently used and may need to be replaced for further use of the electronic cigarette of Yi Cewei. There is no requirement in the claim that every component of the consumable must be subjected to the same steps during use of the electronic cigarette.
It is also noted that the limitation “greater than 15 wt.% water” is one of two alternatives, therefore is optional, the other option being “the flavor glycoside is obtained from a biotechnological process.” Therefore, reference to an amount of water in the consumable of Yi Cewei have been removed. The examiner’s comments regarding the limitation of the flavor glycoside being obtained from a biotechnological process are maintained for reasons discussed below.
Regarding i), The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).
Regarding j), in the referenced example, the solubility of flavor glycosides are compared with the solubility of the flavors alone. There is no comparison between flavor glycosides made by different processes.
Regarding k), the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. >See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”)
The outstanding rejections over the cited prior art are maintained but have been modified by removing the reference to an amount of water in the consumable of Yi Cewei.
Claim Interpretation
The claim term “consumable” is given its broadest reasonable interpretation as follows (Cambridge Advanced Learner's Dictionary & Thesaurus):
“Consumables are goods, especially food or services, that people buy regularly because they are quickly used and need to be replaced often:”
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 32-36 and 39-51 are rejected under 35 U.S.C. 103 as being unpatentable over Yi Cewei (CN102266125B), with English translation used for citations, and with the evidence of key term-Glycoside (organic chemistry review). Yi Cewei (CN102266125B) was cited in an Information Disclosure Statement filed 2/27/2023.
Claim 32: Yi Cewei discloses a consumable for an electronic cigarette (electronic provision system) comprising propylene glycol (aerosol-generating material), water and a ginkgo glycoside to be incorporated into a smoking article (p 2 to top of p 3, Summary; top half of p 6). Ginkgo biloba is a well-known flavorant in the art for smoking articles and is also recited by Yi Cewei as a component of the for consumable composition. The ginkgo glycoside is a flavor glycoside and comprises by definition a ginkgo component bound to a sugar molecule, such as a monosaccharide, by a glycosidic bond (see key term-Glycoside).
It is also noted that the limitation “greater than 15 wt.% water” is one of two alternatives, therefore is optional, the other option being “the flavor glycoside is obtained from a biotechnological process.” However, it is not clear what physical or chemical property is conferred to the final product, which is a consumable for an electronic cigarette, by obtaining the flavor glycoside by the optional process. The claimed limitation appears no more than a method limitation that imparts no patentable weight to the claim.
Claim 33 is a product claim. It is not clear what physical or chemical property is conferred to the final product, which is a consumable for an electronic cigarette, by obtaining the flavor glycoside by an enzymatic process. The claimed limitation appears no more than a method limitation that imparts no patentable weight to the claim.
Claims 34-35: A monosaccharide would have been an obvious sugar used to form the glycoside (see key term-Glycoside). Glucose would also have been obvious as the simplest and widely used sugar molecule in the art.
Claim 36: Yi Cewei discloses components of the consumable composition including ethanol and menthol, which are aliphatic alcohols (bottom of p 2; top half of p 6).
Claim 39: Yi Cewei discloses components of the consumable composition including tobacco flavor, which reads on active materials. Yi Cewei further discloses borneol, menthol, clove, benzoin, lobelin and rosemary as a traditional Chinese medicine powder, which also reads on active materials (bottom of p 2; top half of p 6).
Claim 40: Nicotine is not added (bottom of p 2), therefore a nicotine-free product would have been obvious.
Claim 41: The courts have held that one of ordinary skill in the art would certainly tailor a mixture to proportions to reach desired function/properties of the product. It is by now well settled that where patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or the like, the burden is on the applicant to establish with objective evidence that the change is critical, i.e., it leads to a new, unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the present case, Applicants have advanced no objective evidence which establishes that using such ranges would produce anything other than expected results.
Claim 42: Yi Cewei discloses components of the consumable composition including clove, lemon flavor, borneol, menthol, clove, benzoin, lobelin and rosemary, which are different flavors than the flavor used in the ginkgo glycoside. Yi Cewei also discloses ginkgo biloba, which includes the same flavor used in the ginkgo glycoside (bottom of p 2; top half of p 6).
Claim 43: the consumable of Yi Cewei comprises a composition substantially identical to the claimed consumable. Where applicant claims a composition or product in terms of a function, property or characteristic and the structure or composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, a rejection is appropriate. In other words, when the structure recited in the reference is substantially identical to that of the claims, the claimed properties or functions are presumed to be present. See Jn re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Claim 44: The consumable composition is a liquid (bottom of p 2).
Claim 45: Yi Cewei discloses the consumable and an electronic cigarette (aerosol provision system) comprising a heating element that heats the disclosed consumable to produce an atomized gas (aerosol-provision) to make smokers feel that the fine mist is the same as cigarettes, (p 2, top half and next to last paragraph; bottom half of p 4 to top of p 5). The system is a non-combustible aerosol provision system .
Claim 46: The aerosol provision system of Yi Cewei is substantially identical to the claimed aerosol provision system and consumable and will exhibit or will be presumed to exhibit the claimed release rate of the flavoring agent for reasons previously given.
Claim 47: As discussed above with respect to Claim 32, Yi Cewei discloses a consumable composition comprising an aerosol generating material (propylene glycol, which must obviously be provided). A ginkgo glycoside comprising a flavoring agent bound to a sugar via a glycosidic bond (flavor glycoside, which must obviously be provided) is contacted with the aerosol generating material to provide the consumable (bottom of p 2; top half of p 6).
It is also noted that the limitation “greater than 15 wt.% water” is one of two alternatives, therefore is optional, the other option being “the flavor glycoside is obtained from a biotechnological process.” However, it is not clear what physical or chemical property is conferred to the final product, which is a consumable for an electronic cigarette, by obtaining the flavor glycoside by the optional process. The claimed limitation appears no more than a method limitation that imparts no patentable weight to the claim.
Claim 48: The limitations of the consumable, method of making the consumable and an aerosol-provision system comprising the consumable have been discussed above. The consumable of Yi Cewis substantially identical to the claimed consumable and will prolong or will be presumed to prolong the flavor of the consumable in an aerosol-provision system for reasons previously given.
Claim 49: The limitations of the consumable, method of making the consumable and an aerosol-provision system comprising the consumable have been discussed above. Aerosolizing the one or more additional flavoring agents during use of the aerosol-provision system would have been obvious as the typical intended use of aerosol-provision systems. The consumable and aerosol provision system of Yi Ceware substantially identical to the claimed aerosol provision system and consumable and will exhibit or will be presumed to exhibit the claimed change in flavor and the release of additional flavoring agents prior to the flavor glycoside for reasons previously given.
Claim 50: The limitations of the consumable, method of making the consumable and an aerosol-provision system comprising the consumable have been discussed above. The flavoring agent bound to a sugar via a glycosidic bond in the consumable of Yi Cewis substantially identical to the claimed flavoring agent bound to a sugar via a glycosidic bond in and will exhibit or will be presumed to exhibit the claimed increase in water solubility of the flavoring agent in the consumable for reasons previously given.
Claim 51: The limitations of the consumable, method of making the consumable and an aerosol-provision system comprising the consumable have been discussed above. The flavoring agent bound to a sugar via a glycosidic bond in the consumable of Yi Cewis substantially identical to the claimed flavoring agent bound to a sugar via a glycosidic bond in and will exhibit or will be presumed to exhibit the claimed increase in shelf life of the flavoring agent in the consumable for reasons previously given.
Allowable Subject Matter
Claims 37-38 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Yi Cewis fails discloses a consumable comprising 10-20 wt% water. Yi Cewis
fails to disclose or suggest an amount of water higher than 20 wt%. the prior art provides no motivation to modify the consumable of Yi Cewis to comprise greater than 20 wt% water.
Conclusion
THIS ACTION IS MADE FINAL. 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 DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS R CORDRAY/Primary Examiner, Art Unit 1748