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 Amendment
Applicant’s amendment to claims 1, 7, 21-22, 28, and 31-34, cancellation of claims 2-3, 6, 11-12, 23-26, and 29-30, and accompanying remarks filed 03/30/2026 (“Amendment”) have been entered. The claim objections and claim rejections under 35 USC 103 are maintained. Claims 1, 7, 10, 13-17, 19-22, 28, and 31-44 remain pending, claims 37-38 remain withdrawn, and claims 1, 7, 10, 13-17, 19-22, 28, 31-36, and 39-44 are examined herein.
Response to Arguments
Applicant's arguments regarding the claim rejections under 35 USC 103 (Amendment p. 7-10) have been fully considered but they are not persuasive.
Applicant argues that Sebastian fails to disclose the claimed second substrate material in the form of one or more beads, sphere, or rods adhered to, or imbedded within, the first substrate material in the form of a sheet, as recited in amended claim 1, because Sebastian merely teaches that the substrate “can be solid or liquid form (e.g., beads, sheets, shreds, a wrap)” or as a “series of overlapping layers of a composite substrate sheet” which does not teach or suggest two separate substrate materials as recited in claim 1 (Amendment p. 7-8).
The Examiner respectfully disagrees because Sebastian specifically discloses that “the nanocellulose film or sheet may be impregnated with an aerosol precursor composition” [0063], the nanocellulose sheet reading on the claimed “first substrate material in the form of a sheet” and the aerosol precursor composition reading on the claimed “second substrate material…adhered to, or imbedded within, the first substrate material” as set forth in the rejections below. Sebastian further discloses “a substrate material that comprises, for example, a substrate material associated with an aerosol precursor composition, an extruded structure and/or substrate, tobacco and/or a tobacco related material, such as a material that is found naturally in tobacco that is isolated directly from the tobacco or synthetically prepared, in a solid or liquid form (e.g., beads, sheets, shreds, a wrap), or the like” [0027], discloses that “the form of the substrate portion 110 may include gels, shreds, films, suspensions, extrusions, shavings, capsules, and/or particles (including pellets, beads, strips, or any desired particle shape of varying sizes) and combinations thereof” [0046], and discloses at [0055] that “[m]ethods for loading aerosol precursor compositions onto substrate portions are described in… U.S. Pub. Pat. App. Nos….2018/0279673 to Sebastian et al.”, which discloses that “the aerosol precursor composition most preferably incorporates tobacco or components derived from tobacco. In one regard, the tobacco may be provided as parts or pieces of tobacco, such as finely ground, milled or powdered tobacco lamina” at [0069]. These disclosures render obvious the aerosol precursor composition being “in the form of one or more beads” as claimed.
The remaining arguments regarding Sears and other prior art (Amendment p. 8-10) are moot, because solely Sebastian is relied upon for the discussed claim elements.
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.
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, 10, 13-17, 19-20, 28, 31-33, 35-36, and 39-44 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian (US 2020/0281249 A1) in view of Sears (US 2015/0335070 A1).
Regarding claim 1, Sebastian is directed to an aerosol source member with a substrate portion (a “composite substrate” as claimed) comprising a nanocellulose material impregnated with an aerosol precursor composition (Abstract):
The substrate portion may include the nanocellulose material (“first substrate material”) as a series of overlapping layers of a composite substrate sheet (“in the form of a sheet”) [0063].
The claimed “tobacco material”, “wood pulp”, “calcium carbonate”, and “maltodextrin” are recited in amounts which include zero and are therefore not required claim elements.
The nanocellulose material is formed with glycerol (“glycerin”) [0064] and may be coated with a binder including carboxymethylcellulose (“carboxymethylcellulose”) [0065, 0067].
However, Sebastian does not specify their amounts, and thus fails to disclose “glycerin in an amount from about 10 to about 20% by weight, based on the total dry weight of the first substrate material” and “carboxymethylcellulose in an amount from about 5 to about 15% by weight, based on the total dry weight of the first substrate material” as claimed.
The aerosol precursor composition (“second substrate material”) may be provided in a solid bead form ([0027, 0046], and [0055] citing to U.S. Pub. Pat. App. No. 2018/0279673 to Sebastian et al. at [0069]) (“in the form of one or more beads, sphere, or rods”). The substrate portion may include the aerosol precursor composition impregnated within the nanocellulose sheet [0055, 0063] (“imbedded within, the first substrate material”).
The aerosol precursor composition includes tobacco or components derived from tobacco (“filler”, Applicant’s specification p. 3) [0060], is blended with a binder (“binder”) [0072], and includes glycerin (“aerosol forming material”) [0060].
Sears is directed to an electrically-powered aerosol delivery system (Title). Sears discloses particles containing about 10-50% glycerol and about 0.25-15% of a binder which is preferably carboxymethylcellulose [0054], each of which overlaps the claimed ranges and therefore renders them obvious. See MPEP 2144.05(I); see also In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (notably, Sears discloses about 15-50 wt% water [0054], and thus the “dry” weights of glycerol and binder would be their weight percentages excluding such water, i.e., between 1/(1-0.15) and 1/(1-0.5) of the disclosed values, which nevertheless overlaps the claimed ranges in each instance). One of ordinary skill in the art attempting to implement Sebastian’s disclosure would look to Sears for the compositional weights of glycerol and CMC, particularly because Sebastian is silent on the amounts of such components.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sebastian by preparing its nanocellulose material with Sears’ disclosed amounts of glycerol and carboxymethylcellulose, because both Sebastian and Sears are directed to aerosol generating materials, Sebastian is silent on the amounts of such components, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 6, the substrate portion may include a combination of particle sizes and shapes [0046], such as the solid bead aerosol precursor composition and the sheet nanocellulose material set forth above in the discussions of claim 1 [0027, 0046, 0063].
Regarding claim 10, the nanocellulose material may include wood pulp [0046, 0050-51], and the aerosol precursor composition may include tobacco or components derived from tobacco [0060].
Regarding claims 13-14, the nanocellulose is further coated with a binder which may include CMC [0067], and the aerosol precursor composition may be combined with such a binder material as well [0069].
Regarding claims 15-17, each of the nanocellulose material and the aerosol precursor composition may include glycerin (“polyhydric alcohol”) as set forth above in the discussion of claim 1. The aerosol precursor composition may include propylene glycol [0008].
Regarding claims 19-20, the nanocellulose material may include a non-tobacco-derived nicotine and additional flavorants [0010, 0063].
Regarding claim 28, the aerosol precursor composition may comprise menthol (“flavorant”, Applicant’s specification p. 32) [0008].
Regarding claim 31, the substrate portion may include about 30-45 wt% of the aerosol precursor composition [0055], which lies entirely within the claimed range and therefore renders it obvious.
Regarding claim 32, Sebastian discloses the aerosol precursor composition provided in a solid bead form impregnated in the nanocellulose material (which reads on “wherein the beads…are adhered to the surface of the first substrate material”), as set forth above in the discussion of claim 1. Sebastian discloses the beads may be provided in “any desired particle shape of varying sizes” [0046]. Sebastian discloses components 204, 208, and 212 with overall diameters of about 3-8 mm [0080, 0088], and one of ordinary skill in the art would expect the beads of the substrate portion 210 to be sized similarly or smaller to such components 204, 208, and 212 (see [0077], Figs. 5-6). Thus, the claimed bead diameter range of about 0.1-5 mm is obvious in view of Sebastian. See MPEP 2144.05(I); see also in re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 33, Sebastian discloses the aerosol precursor composition provided in a solid bead form impregnated in the nanocellulose material (which reads on “wherein the beads…are adhered to the surface of the first substrate material”), as set forth above in the discussion of claims 1. Sebastian discloses the beads may be provided in “any desired particle shape of varying sizes” [0046], and this disclosure of random sizes at least renders obvious the claimed arrangement of beads “in a randomly spaced pattern”.
Regarding claim 35, the substrate portion as set forth above in the discussion of claim 1 does not include wood fibers (see [0046] listing numerous cellulose materials aside from wood). Additionally, Sebastian discloses that the substrate portion may be substantially free of non-tobacco botanicals [0009].
Regarding claim 36, the substrate portion may be substantially free of tobacco [0009]. In such case, the aerosol precursor composition including polyols [0008] would read on the claimed “filler” (Applicant’s specification p. 23 listing sugar alcohols which are polyols as a filler).
Regarding claim 39, Sebastian discloses an aerosol delivery device 100 with an aerosol source member 104, which includes the substrate portion 110 and a heat source ([0027, 0029, 0039], Figs. 1-3). The device 100 further includes an aerosol pathway (Abstract).
Regarding claims 40-41, the heat source may be a combustible ignition source comprising a carbon-based material [0006].
Regarding claims 42-44, the heat source may be an electrically-powered heating element (per claim 42) comprising a power source electronically connected to the heating element (per claim 43) with a controller configured to control the power transmitted by the power source to the heating element (per claim 44) [0006].
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian (US 2020/0281249 A1) in view of Sears (US 2015/0335070 A1) as applied to claim 1, further in view of Kwon (US 2024/0298697 A1) and Gellatly (US 5,724,998 A).
Sebastian discloses the aerosol precursor composition provided in a solid bead form impregnated in the nanocellulose material, as set forth above in the discussion of claim 1. However, Sebastian is silent on the densities of such materials and therefore fails to disclose “wherein the density of the second substrate material is at least about 10% higher than the density of the first substrate material”.
Kwon is directed to an aerosol-generating article and device (Title). Kwon discloses a density of the tobacco granules may be in a range of 0.5 g/cm3 to 1.2 g/cm3 [0012]. One of ordinary skill in the art would expect Sebastian’s beads to have similar density.
Gellatly is directed to reconstituted tobacco sheets and methods for producing them (Title). The reconstituted tobacco sheet includes cellulose (col. 6 l. 12-23) and may have exemplary densities of 0.56, 0.58, 0.98, 1.16 gm/cc (col. 12 l. 32-col. 14 l. 5). One of ordinary skill in the art would expect Sebastian’s tobacco-derived cellulose to have similar density.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to incorporate Sebastian’s aerosol precursor composition beads at a density in a range of 0.5 g/cm3 to 1.2 g/cm3 as taught by Kwon and to incorporate Sebastian’s nanocellulose material at a density of 0.56, 0.58, 0.98, or 1.16 gm/cc (which values overlap the claimed range and therefore render it obvious; for instance, 1.2 is at least about 10% higher than 0.56), because Sebastian, Kwon, and Gellatly are all directed to aerosol-generating materials, Sebastian is silent on such densities, and this involves combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian (US 2020/0281249 A1) in view of Sears (US 2015/0335070 A1) as applied to claim 1, further in view of McClanahan (US 2021/0259299 A1, provided in IDS dated 11/4/2024).
Regarding claims 21-22, Sebastian discloses the aerosol precursor composition provided in a solid bead form impregnated in the nanocellulose material, as set forth above in the discussion of claim 1. However, Sebastian is silent on the weight of filler in such beads and therefore fails to disclose “wherein the beads…comprise at least about 50% by weight of the second filler, based on the total dry weight of the beads” per claim 21 and “from about 50% to about 65%” per claim 22.
McClanahan is directed to a beaded tobacco material and related method of manufacture (Title). McClanahan broadly discloses that such beads can provide certain desirable properties for oral use [0003-4]. The beads may include about 10-75% of a filler by weight [0006], which overlaps the claimed ranges. One of ordinary skill in the art implementing Sebastian’s disclosure would look to McClanahan for the weight loading of filler in the beads, particularly because Sebastian is silent on this aspect. Such fillers may include maltodextrin and calcium carbonate [0067] (which reads on the “second filler” per Applicant’s specification p. 3).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sebastian by incorporating McClanahan’s fillers maltodextrin and calcium carbonate at about 10-75 wt% into Sebastian’s aerosol precursor composition beads, because Sebastian and McClanahan are directed to aerosol materials, Sebastian is silent on such wt%, McClanahan teaches that such beads can provide certain desirable properties for oral use, and this involves combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian (US 2020/0281249 A1) in view of Sears (US 2015/0335070 A1) as applied to claim 1, further in view of Ferrie (WO 2020/089065 A1).
Sebastian discloses the aerosol precursor composition provided in a solid bead form impregnated in the nanocellulose material (which reads on “wherein the beads…are adhered to the surface of the first substrate material”), as set forth above in the discussion of claim 1. However, Sebastian fails to disclose the beads being arranged “in a uniformly spaced pattern” as claimed.
Ferrie is directed to a smoking substitute consumable which includes a first and second aerosol-forming material (Title, Abstract). The first material includes extruded tobacco granules 14 which are embedded within the second material which is a matrix of reconstituted tobacco 13 (p. 5 l. 1-11, p. 9 l. 18-22). The first material is evenly spaced and entirely embedded within the matrix (p. 5 l. 21-24), and one of ordinary skill in the art would recognize this advantageously provides a consistent release of aerosol (see p. 5 l. 25-27).
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Sebastian by impregnating the aerosol precursor composition beads into the nanocellulose material such that they are evenly spaced and entirely embedded within the nanocellulose material as taught by Ferrie, because both Sebastian and Ferrie are directed to aerosol source materials, one of ordinary skill in the art would recognize this advantageously provides a consistent release of aerosol, and this involves combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
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 MICHAEL PATRICK MULLEN whose telephone number is (571)272-2373. The examiner can normally be reached M-F 10-7 ET.
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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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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747 /Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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