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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In the Appeal Brief Filed 9/30/2025, Appellant essentially argues that the combination of Robinson and Leffingwell list numerous compounds that can be used as flavour precursors (including glutathione) and do not link glutathione specifically to the production of furfurylthiol and it is not inherent to have a flavour precursor compound added to the aerosol forming substrate, wherein the flavor precursor compound releases a thiol-containing flavour compound upon heating of the aerosol forming substrate by the heating element and that the flavour precursor compound results in a production of furfurylthiol. This argument makes claims 2-5 failing to comply with the enablement requirement because the specification of the instant application states that preferably, the flavour precursor compound is cysteine or glutathione and more preferably, the flavour precursor compound is cysteine.
Considering the factors according to MPEP 2164.01(a) including the breadth of the claims, nature of the invention, the state of the prior art and the level of one ordinary skill in the art. In this case the claimed invention is toward tobacco and a flavour precursor compound and the intended use of heating the tobacco and the flavour precursor compound results in a production of furfurythiol. Furthermore, the level of predictability in the art along with the direction provided by the inventor wherein the existence of working examples are glutathione or cysteine (the instant application publication discloses the flavour precursor compound is cysteine or glutathione [0045]). Therefore, based on the disclosure and working examples of the instant application specification, glutathione meets the claimed flavour precursor compound. However, further amount of direction provided by the inventor in the Appeal Brief filed 9/30/2025 wherein the Appellant states that it is not inherent to have a flavour precursor compound (including glutathione) added to the aerosol forming substrate, wherein the flavor precursor compound releases a thiol-containing flavour compound upon heating of the aerosol forming substrate by the heating element and that the flavour precursor compound results in a production of furfurylthiol. This further amount of direction provided by the inventor in the Appeal Brief filed 9/30/2025 seems to explicitly exclude glutathione from meeting the claimed flavour compound. In order for the claimed invention to be in compliance with the enablement requirement, glutathione must meet the claimed flavour precursor compound.
For purpose of examination, the Examiner will assume that specification of the instant application is enable so that heating the preferred flavour precursor compounds such as cysteine and glutathione results in a production of furfurylthiol.
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.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson et al. (U.S Pub. No. 20080092912) in view of Leffingwell et al. (Tobacco Flavoring for smoking products 1972, pages 16 and 52).
Regarding claim 2, Robinson discloses a smoking article comprising:
an aerosol forming substrate comprising tobacco; a heating element configured to heat, but not combust, the aerosol forming substrate; a flavour precursor compound added to the aerosol forming substrate (Abstract [009] and [0058]);
Robinson discloses a compound added to the aerosol forming substrate to release flavor upon heating but does not expressly disclose the compound release thiol-containing flavor compound upon heating. Leffingwell discloses using compounds such as glutathione (page 15) and furfuryl alcohol (page 16) in the smoking article as flavors. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add glutathione/furfuryl alcohol to the smoking article of Robinson. Also, glutathione (the exact same compound identified by the Applicant) is known as a compound that releases a thiol-containing flavour compound upon heating, wherein heating of the aerosol forming substrate and glutathione results in the production of furfurylthiol (as admitted by the Applicant, lines 4-5 on page 6 of the specification of the instant application). Furthermore, Leffingwell also discloses furfuryl mercaptan (other name of the claimed furfurylthiol) are desired flavor for smoking article (page 52). Since glutathione is the same compound as the disclosed flavour precursor compound, one of ordinary skill in the art at the time the invention was made would expect it to meet the intended use limitation of releases a thiol-containing flavour compound (furfurylthiol) upon heating of the aerosol forming substrate by heating element.
Regarding claim 3, glutathione/furfuryl alcohol are capable of releasing the flavour compound at a temperature overlapping with the claimed range of from about 200°C to about 450°C (as admitted by Applicant, table 5).
Regarding claims 4-5, Robinson discloses the smoking article further comprising nicotine or a source of nicotine [0089].
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson et al. (U.S Pub. No. 20080092912) in view of Leffingwell et al. (Tobacco Flavoring for smoking products 1972, pages 16 and 52) and further in view of Binggeli et al. (U.S Pub. No. 20030165587)
Regarding claim 2, Robinson discloses a smoking article comprising:
an aerosol forming substrate comprising tobacco; a heating element configured to heat, but not combust, the aerosol forming substrate; a flavour precursor compound added to the aerosol forming substrate (Abstract [009] and [0058]);
Robinson discloses a compound added to the aerosol forming substrate to release flavor upon heating but does not expressly disclose the compound release thiol-containing flavor compound upon heating. Leffingwell discloses using compounds such as mustard (page 57) and glutathione (page 15) and furfuryl alcohol (page 16) in the smoking article as flavors. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add glutathione/furfuryl alcohol to the smoking article of Robinson. Also, glutathione and cystine (the exact same compound identified by the Applicant) is known as a compound that releases a thiol-containing flavour compound upon heating, wherein heating of the aerosol forming substrate and glutathione results in the production of furfurylthiol (as admitted by the Applicant, lines 4-5 on page 6 of the specification of the instant application). Leffingwell also discloses furfuryl mercaptan (other name of the claimed furfurylthiol) are desired flavor for smoking article (page 52).
Binggeli discloses that heating mustard (Brassica within the family Brassicaceae) results in a production of furfurylthiol (Abstract).
Alternatively, Robinson discloses a smoking article comprising:
an aerosol forming substrate comprising tobacco; a heating element configured to heat, but not combust, the aerosol forming substrate; a flavour precursor compound added to the aerosol forming substrate (Abstract [009] and [0058]);
Robinson discloses a compound added to the aerosol forming substrate to release flavor upon heating but does not expressly disclose the compound release thiol-containing flavor compound upon heating. Leffingwell discloses using compound such as furfuryl mercaptan (other name of the claimed furfurylthiol) are desired flavor for smoking article (page 52). Binggeli discloses heating precursor such as S-furfurylcysteine results in a production of furfurylthiol. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use S-furfurylcysteine as the precursor compound that releases a thiol-containing flavour compound upon heating. The combination of Robinson, Leffingwell and Binggeli taken together as a whole teaches/suggests S-furfurylcysteine as the flavour precursor compound releases a thiol-containing flavour compound upon heating of the aerosol forming substrate by the heating element, wherein heating of the aerosol forming substrate and the flavour precursor compound results in a production of furfurylthiol.
Regarding claim 3, glutathione/furfuryl alcohol are capable of releasing the flavour compound at a temperature overlapping with the claimed range of from about 200°C to about 450°C (as admitted by Applicant, table 5). Binggeli discloses the flavour precursor compound is configured to release the flavour compound at a temperature overlapping with the claimed range of temperature [0008].
Regarding claims 4-5, Robinson discloses the smoking article further comprising nicotine or a source of nicotine [0089].
Response to Arguments
Applicant's arguments filed 3/31/2026 have been fully considered but they are not persuasive.
Regarding the rejection under 35 U.S.C section 112, first paragraph, Applicant essentially argues that the Examiner has not established a reasonable basis for questioning the enablement of the pending claims because the Examiner failed to provide an analysis and conclusion of a lack of enablement based on the factors discussed in MPEP 2164.01(a) and the evidence as a whole. This argument is not persuasive because, the Examiner considered the factors according to MPEP 2164.01(a) including the breadth of the claims, nature of the invention, the state of the prior art and the level of one ordinary skill in the art. In this case the claimed invention is toward tobacco and a flavour precursor compound and the intended use of heating the tobacco and the flavour precursor compound results in a production of furfurythiol. Furthermore, the level of predictability in the art along with the direction provided by the inventor wherein the existence of working examples are glutathione or cysteine (the instant application publication discloses the flavour precursor compound is cysteine or glutathione [0045]). Therefore, based on the disclosure and working examples of the instant application specification, glutathione meets the claimed flavour precursor compound. However, further amount of direction provided by the inventor in the Appeal Brief filed 9/30/2025 wherein the Appellant states that it is not inherent to have a flavour precursor compound (including glutathione) added to the aerosol forming substrate, wherein the flavor precursor compound releases a thiol-containing flavour compound upon heating of the aerosol forming substrate by the heating element and that the flavour precursor compound results in a production of furfurylthiol. This further amount of direction provided by the inventor in the Appeal Brief filed 9/30/2025 seems to explicitly exclude glutathione from meeting the claimed flavour compound. In order for the claimed invention to be in compliance with the enablement requirement, glutathione must meet the claimed flavour precursor compound.
Regarding the rejection under 35 U.S.C section 103, Applicant essentially argues that the Examiner has not identified any support in the cited references demonstrating the intended use limitation wherein the production of furfurylthiol (a thiol-containing compound) is a result of heating of the aerosol forming substrate by the heating element. This argument is not persuasive because the combination of Robinson and Leffingwell taken together as a whole discloses an aerosol forming substrate comprising tobacco, a heating element configured to heat, but not combust, the aerosol forming substrate; and a flavour precursor compound (glutathione); one of ordinary skill in the art at the time the invention was made would expect the intended use limitation of heating the aerosol forming substrate and the flavour precursor compound (glutathione) results in a production of furfurylthiol.
Applicant again asserts that it is not inherent that heating glutathione or furfuryl alcohol results in the production of furfurylthiol. This assertion is similar to the assertion in the Appeal Brief filed 9/30/2025 that put the claimed invention’s compliance with the enablement requirement as discussed above.
Applicant also argues that Leffingwell discloses furfuryl alcohol and glutathione exhibit different smoke tastes and aromas from furfurylthiol thereby indicating that heating glutathione does not necessarily result in the production of furfurylthiol. This argument is not persuasive because the Examiner does not take the position that glutathione (precursor compound) is furfurythiol (same tastes aroma); rather, the combination of Robinson and Leffingwell taken together as a whole discloses an aerosol forming substrate comprising tobacco, a heating element configured to heat, but not combust, the aerosol forming substrate; and a flavour precursor compound (glutathione); one of ordinary skill in the art at the time the invention was made would expect the intended use limitation of heating the aerosol forming substrate and the flavour precursor compound (glutathione) results in a production of furfurylthiol.
Applicant also argues that a person of ordinary skill in the art would not have been motivated to combine Leffingwell and Robinson for the intended use of generating furfurylthiol upon heating with aerosol forming substrate. This argument is not persuasive because Leffingwell discloses glutathione, furfuryl alcohol and furfurythiol are all desired compound for a smoking article. Furthermore, as explained above, one of ordinary skill in the art at the time the invention was made would expect the intended use limitation of heating the aerosol forming substrate and the flavour precursor compound (glutathione) results in a production of furfurylthiol.
Regarding the rejection based on Robinson in view of Leffingwell and further in view of Binggeli, the Examiner relied on Binggeli for the intended use limitation of heating the flavor precursor compound results in a production of furfurylthiol. Applicant essentially argues that the Binggeli does not expressly disclose using S-furfurylcysteine independently from a Brassica seed as a precursor in a different system; therefore, a person of ordinary skill in the art would not be motivated to use S-furfurylcysteine as a flavour precursor independent of a Brassica seed as a flavour precursor compound added to the aerosol forming substrate. This argument is not persuasive because, as Applicant pointed out, Binggeli identifies the FFT-precursor (S-furfurylcysteine) within the Brassica seed chemically react upon heating the seed, thereby forming FFT [0018]. It would be clear that one of ordinary skill in the art would have a reasonable expectation of success that heating S-furfurylcysteine (FFT-precursor compound) results in a production of furfurylthiol (FFT) according to the disclosure of Binggeli. Furthermore, since Leffingwell also discloses mustard (Brassica seed) as a desired flavouring compound for a smoking article (page 57); the combination of Robinson, Leffingwell and Binggeli discloses the production of furfurylthiol exactly like the disclosure of Binggeli and meets the claimed invention.
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 PHU H NGUYEN whose telephone number is (571)272-5931. The examiner can normally be reached M-F 9-5.
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/PHU H NGUYEN/Examiner, Art Unit 1747
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