DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s election filed February 18, 2026. Claims 1 and 11 have been amended. Claims 14-18 were previously withdrawn. Claims 1-13 are rejected.
Election/Restrictions
Claims 14-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected system, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 22, 2025.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014102070 A1 (hereinafter FRAUENDORFER) in view of US 20140299135 A1 (hereinafter BESSO).
Regarding claim 1, FRAUENDORFER discloses a smoking composition that can be incorporated into a smoking article that is configured to heat but not combust (abstract). FRAUENDORFER discloses an aerosol-generating segment (Fig. 2, aerosol generating substrate 111, page 14, lines 12-31). FRAUENDORFER further discloses the aerosol-generating segment comprising a first flavor glycoside. FRAUENDORFER discloses that the composition comprises a phenolic glycoside cleaved to the produce a smoky note so that the user may perceive smokey notes similar to experienced when smoking a conventional cigarette (Page 1, lines 20-24).
FRAUENDORFER does not disclose that the aerosol-generating segment comprising at least two portions, each portion comprising an aerosol-generating material nor wherein a concentration of the first flavor glycoside differs between the at least two portions.
FRAUENDORFER teaches that the aerosol-generating segment comprises many portions such as flavors (page 6, lines 20-25), tobacco (page 7, lines 13-17), a polymer matrix (page 7, lines 1-5), and precursor (page 6, lines 25-31). FRAUENDORFER further teaches that the article can comprise multi segmented filters that also contain a flavor that can be aerosolized (page 8, lines 5-11). FRAUENDORFER teaches that the concentration of glycoside may be added at a low concentration or a high concentration to vary the experience of the smoky sensation delivered to a user (page 9, lines 21-37 and continuing page 10, lines 1-3).
BESSO teaches a smoking article having a flavor release segment including a plurality of flavor granules (abstract). BESSO teaches that there may be several segments to provide further flavor enhancement to the smoker during use (¶67). BESSO teaches that the segments may include tobacco leaf, liquid flavorants, etc. (¶67).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the teachings of FRAUENDORFER and the teachings of BESSO to provide that the aerosol-generating segment comprising at least two portions, each portion comprising an aerosol-generating material and wherein a concentration of the first flavor glycoside differs between the at least two portions. First, a person of ordinary skill in the art would obviously provide an aerosol generating segment comprising at least two portions that comprise an aerosol-generating material. Doing so would enhance the flavor experience for the user (BESSO ¶67). In addition, The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, VI, Part B. In this case, the duplication of an aerosol generating portion would provide an expected result of customization and enhancement of the flavor for the smoker. Further a person of ordinary skill in the art would obviously vary the concentration between the portions. FRAUENDORFER discloses that the value concentration of the glycoside needs to be optimized to provide a smoky experience to the user. As taught in (page 9, lines 21-37 and continuing page 10, lines 1-3. See also page 11, lines 6-13) the concentration is varied to customize the smoky sensation. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide different concentrations in the portions as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A). Further, BESSO clearly teaches varying the amount of an applied liquid flavorants (BESSO ¶67). Glycoside is a liquid flavorants that would be applied in varied amounts to yield predictable results for flavor enhancement.
Regarding claim 2, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further teaches wherein a second portion of the at least two portions does not include the first flavor glycoside. FRAUENDORFER teaches that the aerosol-generating segment comprises many portions such as flavors (page 6, lines 20-25), tobacco (page 7, lines 13-17), a polymer matrix (page 7, lines 1-5), and precursor (page 6, lines 25-31). The pure tobacco portion or the added flavorants (such as menthol see page 6, lines 20-25) of the composition does not include the first flavor glycoside.
Regarding claim 3, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further discloses wherein the first flavor glycoside is a flavor glucoside (page 6, lines 5-25).
Regarding claim 4, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further discloses wherein the first flavor glycoside is biotechnologically-produced. FRAUENDORFER discloses that the glycosides may be synthesized in any suitable manner (page 3, lines 33-36 and continuing page 4, lines 1-12). These methods are examples of biotechnological production.
Regarding claim 5, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further discloses wherein the aerosol-generating segment comprises an aerosol-generating material, and wherein at least some of the first flavor glycoside is provided on or within the aerosol-generating material. FRAUENDORFER discloses that the segment comprises tobacco and that the tobacco can have the glycoside added (page 9, lines 22-25). Tobacco is an aerosol generating material with the glycoside added. The recitation of the limitation “or” provides that only one of the limitations in the list be present in the prior art to read upon the claim.
Regarding claim 6, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further discloses wherein the aerosol-generating segment comprises an aerosol-generating material (page 9, lines 22-25) and a wrapper (Fig. 2, cigarette paper 115, page 14, lines 12-31) arranged around the aerosol- generating material, and wherein at least some of the first flavor glycoside is provided on or within the wrapper. The aerosol generating substrate 111 is shown within the wrapper in Fig. 2. As discussed above the glycoside is within the aerosol generating substrate. The recitation of the limitation “or” provides that only one of the limitations in the list be present in the prior art to read upon the claim.
Regarding claim 7, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further discloses wherein the aerosol-generating segment additionally comprises free flavor. FRAUENDORFER teaches that menthol is a flavor that can be added to the composition (page 6, lines 20-25). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claim 8, modified FRAUENDORFER discloses the article of claim 7 as discussed above. FRAUENDORFER further discloses the free flavor is provided in only a first portion, or only a second portion, or in the first portion and the second portion of the at least two portions. FRAUENDORFER teaches that menthol is a flavor that can be added to the composition (page 6, lines 20-25). This reads upon the free flavor in only a first portion. The recitation of the limitation “or” provides that only one of the limitations in the list be present in the prior art to read upon the claim.
Regarding claim 9, modified FRAUENDORFER discloses the article of claim 7 as discussed above. FRAUENDORFER further teaches wherein the free flavor is a same flavor as a glycosylated flavor in the first flavor glycoside. FRAUENDORFER teaches that the term “flavor compound” can be used interchangeably with “phenolic compound having a smoky note” (page 1, lines 34-35). FRAUENDORFER teaches that flavorists (i.e. people of ordinary skill in the art) will readily understand the term “smoky” (page 1, lines 36-37). FRAUENDORFER teaches that “any suitable flavor compound” may be conjugated to produce a glycoside (page 2, lines 3-6, emphasis added). A person of ordinary skill in the art would immediately recognize that any flavor may include the free flavors listed in FRAUENDORFER.
Regarding claim 10, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further teaches the aerosol-generating segment comprises a second flavor glycoside which is different for the first flavor glycoside. FRAUENDORFER further teaches the addition of glycosides. FRAUENDORFER teaches that concentrations of glycosides may vary (page 9, lines 21-37 and continuing page 10, lines 1-3, emphasis added). A person of ordinary skill in the art would immediately recognize that the plural reference to glycosides is a first and second flavor. Further, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, VI, Part B.
Regarding claim 11, modified FRAUENDORFER discloses the article of claim 10 as discussed above. FRAUENDORFER further teaches the first flavor glycoside is provided only in the first portion of the aerosol-generating segment, and the second flavor glycoside is provided only in the second portion of the aerosol-generating segment. FRAUENDORFER further teaches the addition of glycosides. FRAUENDORFER teaches that concentrations of glycosides may vary (page 9, lines 21-37 and continuing page 10, lines 1-3, emphasis added). A person of ordinary skill in the art would immediately recognize that the plural reference to glycosides is a first and second flavor. Further, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, VI, Part B. Further as explained in the rejection of claim 1 above, a person of ordinary skill in the art would obviously vary the flavorants with predictable results in view of BESSO ¶67 to enhance smoker experience.
Regarding claim 12, modified FRAUENDORFER discloses the article of claim 1 as discussed above. FRAUENDORFER further discloses the aerosol-generating segment comprises a solid aerosol-generating material (page 7, lines 27-28).
Regarding claim 13, modified FRAUENDORFER discloses the article of claim 12 as discussed above. FRAUENDORFER further discloses solid aerosol- generating material comprises one or more of a tobacco material (page 8, lines 36-37), an aerosol-former material (page 7, lines 34-35), an active substance (page 1, line 6), and functional materials (page 1, lines 5-9). The recitation of the limitation “or” provides that only one of the limitations in the list be present in the prior art to read upon the claim.
Response to Arguments
Applicant’s arguments, filed February 18, 2026, with respect to the rejection(s) of claims 1-13 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of BESSO.
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 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 STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747