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 .
Status of the Claims
This Office Action is in response to Applicant’s amendments filed 03/05/2026.
Claims 1-11 are pending and are subject to this Office Action.
Response to Arguments
Applicant’s arguments, see pages 6-8, filed 03/05/2026, with respect to the obviousness rejection of claim 1, have been fully considered but they and are not persuasive.
On pages 6-7, the Applicant argues that it would not be obvious to use alternative thickeners of Arae, as Arae fundamentally requires the presence of water. The Applicant specifically cites Arae Example 3, paragraphs [0077] and [0078] (page 8, ¶ 1-2 in the English translation document), as necessitating the use of water when using a polysaccharide thickener instead of gelatin.
The Examiner disagrees.
Arae generally describes the invention such that "the homogenized tobacco is kneaded with a binder, a gelling agent, a cross-linking agent, a fragrance, a hydrophilic fragrance, a lipophilic fragrance, a viscosity modifier, a moisturizing agent, or a reinforcing material as examples of additives" (page 3, ¶ 3) and that "a reconstituted tobacco sheet is a reconstituted tobacco slurry of a liquid or gel kneaded with homogenized tobacco, a binder, a gelling agent, a cross-linking agent, a fragrance, and a viscosity modifier" (page 3, ¶ 5-6), but does not broadly require the presence of water. In fact, Arae teaches various substitutes for moisturizing agents and viscosity modifiers, which do not necessarily include water. As it is only in Example 3 that Arae requires water, it is likely present only as one possible selection of a moisturizer or viscosity modifier. Arae further states that the taught invention is not limited to the presented example (page 12, ¶ 7). It may therefore be inferred that the invention of Arae does not explicitly require water in the presence of a non-water-containing alternative thickener, as is argued by the Applicant.
Thus, Arae is used to teach that one having ordinary skill in the art would recognize that non-water alternative gelling agent may be selected in place of gelatin.
Regarding Wanatabe, the Examiner notes that paragraph [0104] teaches “a non-tobacco plant ground and dried product, a menthol dissolved product, an aerosol former, a binder or a thickener, and water as necessary are mixed to obtain a non-tobacco plant composition”, indicating that water may or may not be present in the final composition. This does not teach, as the Applicant argues, that water is necessary in the formulation. Furthermore, the Examiner maintains that Wanatabe is merely cited to demonstrate that alternative thickeners may comprise polysaccharides. Thus, one having ordinary skill in the art would be capable of replacing a thickener of Han/Arae with an alternative polysaccharide thickener. The reference was not cited to apply the entire aerosol medium to Han, rather a teaching of known thickeners.
Lastly, the Examiner notes that Yamaguchi is merely used as additional evidence that polysaccharides are art-recognized smoking article gelling agents. The specific example in paragraph [0092] cited by the Applicant recites that “by heating the dispersion [a tobacco containing slurry] to 120C or higher, it is possible to decompose substances, such as hemicellulose, that cause thickening through interactions with water”. This example in no way requires water as an additive with a gelling agent, and instead merely describes an interaction between hemicellulose and water. The Examiner further notes that hemicellulose is a substance that is naturally present in plant material, and thus may not even be an additive gelling agent. Thus, Yamaguchi does not indicate that water is indispensable for achieving thickening, but merely provides an example in which the thickening interaction between hemicellulose and water is mitigated. The gelling agent/binder is an element unrelated to this interaction.
Furthermore, the reference was not cited to apply the entire aerosol medium to Han, rather a teaching of known gelling agents.
Thus, the rejection is maintained.
The following is the maintained rejection.
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 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 1-5 and 7-11 rejected under 35 U.S.C. 103 as being unpatentable over Han et al. (WO 2020153829 A1; hereinafter referring to the English translation provided) in view of Arae (WO 2021033637 A1; hereinafter referring to the English translation provided), Watanabe (US 20210127734 A1) and Yamaguchi (US2024/0156152A1).
Regarding claim 1, Han teaches an electrically heated smoking article (heated smoking article 50; Fig. 6; page 7, ¶ 3), comprising:
a filter rod (filter 52; page 7, ¶ 3);
an aerosol medium rod (aerosol-generating substrate 56; page 6, ¶ 2) stacked at a lower end of the filter rod and including an aerosol medium that generates an aerosol by heating and a moisture absorbent (gel receptor 56a; page 6, ¶ 3) accommodating or absorbing the aerosol medium;
and a wrapping portion (wrapping paper 60; page 6, ¶ 2) surrounding and wrapping the filter rod and the aerosol medium rod to maintain a stack structure,
wherein the aerosol medium, including glycerin and a thickener (page 3, ¶ 7; page 7, ¶ 1), is maintained in a semi-solid or solid state in a first temperature range including room temperature and is in a liquefied state in a second temperature range of 50 C to 100 C which is higher than the first temperature range (page 6, ¶ 3), wherein the glycerin vaporizes in a third temperature range of 150 C to 300 C which is higher than the second temperature range to generate an aerosol (page 6, ¶ 3).
Han does not explicitly teach (I) that the aerosol medium does not comprise water and/or gelatin or (II) that the thickener does not vaporize in the third temperature range but remains in the moisture absorbent.
Regarding (I), Arae, directed to an electrically heated smoking article (tobacco product 100; page 2, page 6, ¶ 3) comprising an aerosol generating medium rod (reconstituted tobacco 145; page 2) including glycerin (page 3, ¶ 4), teaches non-water-containing alternative gelling agents to gelatin (including natural polymers, chondroitin phosphate, polysaccharides and polysaccharide salts: alginate, carrageenan, gellan gum, guar gum, agarose, sorbitol, converted sugar, starch, dextrin, and starch decomposition products) (page 3, ¶ 4).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Han by using a gelatin alternative as taught by Arae because both Han and Arae are directed to electrically heated smoking articles comprising aerosol generating medium, Arae teaches known alternatives to gelatin in aerosol generating medium, and this involves substituting one alternative gelling agent for another to yield predictable results.
Regarding (II), Watanabe, directed to an electrically heated smoking article (electronic cigarette cartridge 100; [0055]) comprising a filter rod (mouthpiece 140 including a filter; [0068]), an aerosol medium rod (aerosol forming substrate 110; [0057]) including glycerin ([0041]) and a thickener ([0043]), and a wrapping portion (wrapping sheet 150; [0047]), teaches that the thickener may comprise polysaccharides ([0100]).
Yamaguchi, directed to aerosol generating articles comprising a rod of aerosol generating substrate, teaches combining aerosol-forming agents such as glycerin with binders comprising gum, carbohydrates, or a combination thereof ([0043]; [0045]), wherein the carbohydrate may comprise a monosaccharide, a disaccharide, a polysaccharide ([0045]). The Examiner notes that similar binders/thickener agents are disclosed in Watanabe including gum, saccharides, starch and carboxylmethyl cellulose.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Han by using a monosaccharide, a disaccharide, and/or a polysaccharide as a thickener as taught by Watanabe and Yamaguchi because Han, Watanabe and Yamaguchi are directed to electrically heated smoking articles comprising aerosol generating mediums with thickeners, Han is silent to a thickener composition and one with ordinary skill would be motivated to look to prior art for a known and suitable thickener composition and its respective properties, and this involves applying a known teaching to a similar product to yield predictable results.
One with ordinary skill in the art would understand that polysaccharides generally do not vaporize with heating, and thus would be expected to remain in the moisture absorbent in the third temperature range.
Furthermore, it is noted that monosaccharides and disaccharides are considered equivalent to the thickeners that are disclosed by the Applicant and are acknowledged by the Applicant to be suitable thickeners that do not vaporize when glycerin vaporizes, and thus, one of ordinary skill would reasonably conclude that the saccharides disclosed by the prior art would function in a similar manner in the article of Han as claimed by the Applicant, absent evidence to the contrary.
Regarding claims 2 and 3, Watanabe teaches that the thickener includes monosaccharides ([0100] teaches that the thickener may be a polysaccharide, which include monosaccharides).
Wanatabe further teaches that the monosaccharides are plant extracts including glucose ([0100] teaches that the thickener may be a polysaccharide such as starch, which includes glucose monosaccharides).
Furthermore, Yamaguchi teaches monosaccharides as a suitable binder/thickener ([0045]).
Regarding claim 4, Yamaguchi teaches disaccharides as a suitable binder/thickener ([0045]).
The Examiner notes that a disaccharide not extracted from a sugar will be structurally equivalent to a disaccharide extracted from sugar and therefore meet the claim. Furthermore, a disaccharide is a sugar, and therefore is considered to be “extracted” from such. Monosaccharides and polysaccharides, from which disaccharides may be derived, are also sugars.
Regarding claims 2 and 5, Han does not teach that the thickener includes sugar alcohols including sorbitol
Arae, directed to an electrically heated smoking article (tobacco product 100; page 2, page 6, ¶ 3) comprising an aerosol generating medium including glycerin (page 3, ¶ 4), teaches that sorbitol, a sugar alcohol, is a known thickener (gelling agent) in aerosol generating mediums (page 3, ¶ 4).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Han by using sorbitol as a thickener as taught by Arae because both Han and Arae are directed to electrically heated smoking articles comprising aerosol generating mediums, Han is silent to a thickener composition and one with ordinary skill would be motivated to look to prior art for a known and suitable thickener composition and its respective properties, and this involves applying a known teaching to a similar product to yield predictable results.
One with ordinary skill in the art would understand that sorbitol has a boiling point above that of glycerin, and thus would be expected to remain in the moisture absorbent in the third temperature range. Furthermore, given that the Applicant has acknowledged sorbitol as a suitable thickener that does not vaporize when glycerin vaporizes, one of ordinary skill would reasonably conclude that sorbitol would function in a similar manner in the article of Han as claimed by the Applicant, absent evidence to the contrary.
Regarding claim 7, Han teaches that the aerosol medium further includes one or more selected from the group consisting of propylene glycol (page 6, ¶ 5) and flavoring agents (page 7, ¶ 1).
Regarding claim 8, Han teaches that that the aerosol medium further includes a flavoring component (page 7, ¶ 1), and the flavor component includes one or more substances selected from the group consisting of menthol (page 9, ¶ 1), fruit flavor (page 7, ¶ 1), or herbal flavor (page 9, ¶ 1).
Regarding claim 9, Han teaches that the electrically heated smoking article further comprises a cooling tube rod (paper tube 54; page 6, ¶ 2; page 13, ¶ 7) having a hollow in a vertical direction between the filter rod and the aerosol medium rod (Fig. 6).
Regarding claim 10, Han teaches that the electrically heated smoking article further comprises a tobacco body rod (tobacco body 58; Fig. 6; page 6, ¶ 2) at the top or bottom of the aerosol medium rod (Fig. 6).
Regarding claim 11, Han teaches that the electrically heated smoking article further comprises a nicotine rod (tobacco body 58; Fig. 6; page 6, ¶ 2) at the top or bottom of the aerosol medium rod (Fig. 6).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Han, Arae and Watanabe as applied to claim 2 above, and further in view of Hu et al. (WO 2017080490 A1; hereinafter referring to the English translation provided).
Regarding claim 6, Han does not explicitly teach that the oligosaccharides are maltodextrin.
Hu, directed to a smokeless tobacco product (Abstract) comprising glycerin (page 4, ¶ 5), teaches that maltodextrin is a known oligosaccharide thickener in the art (page 3, ¶ 8; page 4, ¶ 11. Maltodextrin is a sugar with a degree of polymerization of two or higher).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Han by using a maltodextrin thickener as taught by Hu because Han, Watanabe and Hu are directed to tobacco-related products, Watanabe teaches that oligosaccharides are known thickeners, Hu teaches that it is known in the art to use maltodextrin as an oligosaccharide thickener, and this involves substituting one alternative thickener for another to yield predictable results.
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 Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.D./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755