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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/02/2026 has been entered.
Status of the Claims
Claims 1-17 are pending and are subject to this office action. Claims 1 and 9 are currently amended. Claim 17 is previously withdrawn as being directed to a nonelected invention.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 06/02/2026 containing remarks to the claims.
Response to Arguments
Applicant’s arguments, see pg. 6-8, filed 06/02/2026, with respect to the rejection of claims 1 and 16 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended independent claims 1 and 9 to require that the wrapper has the same combustion properties as the inhalable substance instead of the wrapper comprising the same combustion properties as the inhalable substance. The prior rejection relied upon a smokable material comprising cannabis in loose leaf, chopped, or other processed forms disclosed by Bowen ([0051]) wrapped in a paper derived from cannabis disclosed by Ostrander ([0026]). The wrapper "has" the same combustion properties is interpreted as the wrapper and inhalable substance having substantially the same composition such that their combustion properties are the same. Cannabis in the form disclosed by Bowen and the cannabis derived paper disclosed by Ostrander are expected to comprise some of the same components but their overall compositions are not identical. Therefore, they would not be expected to have the same combustion properties. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of newly found prior art.
On pg. 7, Applicant argues that Drabner fails to disclose each limitation of claim 1 because the cigarillo disclosed by Drabner is intended to be burned instead of vaporized. The Examiner disagrees. Claim 1 is directed to a cartridge and is limited to the positively recited elements of the cartridge. The limitations directed to a vaporizer heat source vaporizing the inhalable substance and wrapper without burning the wrapper are claimed as intended use. The wrapper and inhalable substance disclosed by Drabner are capable of being heated to vaporize the inhalable substance and wrapper without burning the wrapper. As such, claim 1 is rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Drabner (US 20070199570 A1) and presented below.
On pg. 7-8, Applicant presents arguments regarding a combination of Bowen and Drabner which are moot because a combination of Bowen and Drabner has not been presented.
Therefore, the rejections below are maintained and modified based on Applicant’s amendment.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Drabner (US 20070199570 A1).
Regarding claim 1, Drabner discloses a cigarillo (50, “a cartridge”, Fig. 5) comprising:
Threshed tobacco (52, i.e. tobacco leaf with the stem removed, “an inhalable substance”) circumscribed by a wrapper (54), where the wrapper (54) is made of portions of tobacco leaves (8a, 8b, 10a, 10b, Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]).
The threshed tobacco (52, “inhalable substance”) and wrapper (54) are both formed of tobacco leaves (Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]). Therefore, the inhalable substance and wrapper are considered to have the same combustion properties.
In regards to the limitations directed to heat applied from a vaporizer heat source, the Examiner notes that the claim is directed to a cartridge and is limited to the positively recited elements of the cartridge. A vaporizer heat source vaporizing the inhalable substance and wrapper without burning the wrapper, where heat from the vaporizer heat source is applied at a temperature lower than the combustion temperature of the wrapper such that the heat from the heat source transfers through the wrapper at a substantially similar temperature that does not burn the wrapper is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case the cigarillo (50, “cartridge”) disclosed by Drabner is capable of being heated with a vaporizer heat source to vaporize the inhalable substance and wrapper without burning the wrapper, such that when heat from the vaporizer heat source is applied at a temperature lower than the combustion temperature of the wrapper such that the heat from the heat source transfers through the wrapper at a substantially similar temperature that does not burn the wrapper.
Regarding claim 2, Drabner discloses the inhalable substance comprises threshed tobacco (52, Fig. 5, [0080]).
Regarding claim 3, Drabner discloses the wrapper (54) is made of portions of tobacco leaves (8a, 8b, 10a, 10b, Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]). Tobacco leaves are naturally derived and considered to be a biodegradable substance.
Regarding claim 4, Drabner discloses the wrapper (54) is made of portions of tobacco leaves (8a, 8b, 10a, 10b, Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]). A wrapper formed of tobacco leaves is considered to be leaf paper.
Regarding claim 5, Drabner discloses the wrapper (54) forms a cylindrical tube (Fig. 5).
Regarding claim 6, Drabner discloses the ends of the cigarillo (50) are exposed such that the wrapper (54) does not fully enclose the threshed tobacco (52, “inhalable substance”, Fig. 5).
Regarding claim 7, Bowen does not explicitly disclose the smokeable substance is inserted into a wrapper by a user.
However, the Examiner notes that claim 7 is directed to a cartridge and is limited to the structure and composition of the cartridge and not the method of making the cartridge. Inserting the inhalable substance in the wrapper by a user as claimed is merely a product by process limitation. So long as the prior art discloses a product that is structurally and compositionally equivalent to the claimed cartridge then the prior art meets the claim, so long as the manner of manufacturing the cartridge does not impart some structural feature to the product. In this instance case, the cigarillo (50, Fig. 5) disclosed by Drabner is considered equivalent to the claimed cartridge and the step of inserting the inhalable substance into the wrapper does not impart any additional structural or compositional limitation to the cartridge.
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.
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over Guo (US 20180289073 A1) in view of Drabner (US 20070199570 A1).
Regarding claim 9, Guo discloses an electronic smoking device (Fig. 1, “a vaporizer”, [0016]), comprising:
A heating chamber (6) for receiving a cigarette (10, “a cartridge”), and heating elements (3, Fig. 2, [0016-0018]).
The heating elements (3) are heated to about 300°C to volatize the nicotine in the cigarette without burning the tobacco ([0011, 0023-0024]).
Guo does not explicitly disclose the inhalable substance and wrapper of the cigarette have the same combustion properties.
However, Drabner directed to a cigarillo (50, “a cartridge”, Fig. 5), discloses:
Threshed tobacco (52, i.e. tobacco leaf with the stem removed, “an inhalable substance”) circumscribed by a wrapper (54), where the wrapper (54) is made of portions of tobacco leaves (8a, 8b, 10a, 10b, Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]).
The threshed tobacco (52, “inhalable substance”) and wrapper (54) are both formed of tobacco leaves (Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]). Therefore, the inhalable substance and wrapper are considered to have the same combustion properties.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Guo by substituting the cigarette with the cigarillo as taught by Drabner because both Guo and Drabner are directed to smoking apparatuses, Guo discloses an electronic smoking device for smoking a smoking article but is silent to the materials used in the smoking article, Drabner discloses a smoking article comprising tobacco leaves and a tobacco leaf wrapper, and this involves substituting one smoking article for another to yield predictable results.
Guo discloses a heating element (3) that is heated to about 300°C to volatize the nicotine in the cigarette without burning the tobacco ([0011, 0023-0024]). Drabner discloses a cigarillo (50, “a cartridge”, Fig. 5) comprising threshed tobacco (52, i.e. tobacco leaf with the stem removed, “an inhalable substance”) circumscribed by a wrapper (54), where the wrapper (54) is made of portions of tobacco leaves (8a, 8b, 10a, 10b, Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]). Therefore, heat from the heating elements (Guo: 3) would be expected to vaporize the tobacco (Drabner: 52) and tobacco wrapper (Drabner: 54) without burning the wrapper and heat from the heating elements (Guo: 3) applied at a temperature below the combustion temperature of the tobacco wrapper (Drabner: 54) would be expected to transfer through the wrapper at a substantially similar temperature that does not burn the wrapper.
Regarding claim 10, Drabner discloses the inhalable substance comprises threshed tobacco (52, Fig. 5, [0080]).
Regarding claim 11, Drabner discloses the wrapper (54) is made of portions of tobacco leaves (8a, 8b, 10a, 10b, Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]). Tobacco leaves are naturally derived and considered to be a biodegradable substance.
Regarding claim 12, Drabner discloses the wrapper (54) is made of portions of tobacco leaves (8a, 8b, 10a, 10b, Fig. 1, Fig. 2a, Fig. 5, [0069-0071, 0080]). A wrapper formed of tobacco leaves is considered to be leaf paper.
Regarding claim 13, Drabner discloses the wrapper (54) forms a cylindrical tube (Fig. 5).
Regarding claim 14, Drabner discloses the ends of the cigarillo (50) are exposed such that the wrapper (54) does not fully enclose the threshed tobacco (52, “inhalable substance”, Fig. 5).
Regarding claim 15, Bowen does not explicitly disclose the smokeable substance is inserted into a wrapper by a user.
However, the Examiner notes that claim 15 is directed to an apparatus and is limited to the structure and composition of the apparatus and not the method of making the apparatus. Inserting the inhalable substance in the wrapper by a user as claimed is merely a product by process limitation. So long as the prior art discloses a product that is structurally and compositionally equivalent to the claimed cartridge then the prior art meets the claim, so long as the manner of manufacturing the cartridge does not impart some structural feature to the product. In this instance case, the cigarillo (50, Fig. 5) disclosed by Drabner is considered equivalent to the claimed cartridge and the step of inserting the inhalable substance into the wrapper does not impart any additional structural or compositional limitation to the cartridge.
Claims 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen (US 20170181468 A1) in view of Wilhem (US 1964417 A).
Regarding claim 1, Bowen discloses a cartridge (30, Fig. 5-8), comprising:
A smokeable material (31) enclosed in a wrapper (32, Fig. 5-8, [0061])
The wrapper (32) may be made of any material that does not produce harmful gases at operating temperatures of the device ([0064, 0072]).
The smokeable material (31) is loose leaf tobacco ([0051-0052]).
Bowen does not explicitly disclose the smokeable material and wrapper have the same combustion properties.
However, Wilhem, directed to a cigarette (Fig. 3), discloses:
A tobacco wrapper for a cigarette that is elastic and resistant to destructive forces (Fig. 3, Fig. 4, lines 4-10, lines 80-85)
The wrapper (4, Fig. 3, Fig. 4) is formed by cutting tobacco leaves into strips, spinning the strips into threads, and weaving a fabric of the tobacco threads (lines 10-40).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bowen by substituting the wrapper with the woven tobacco wrapper as taught by Wilhem because both Bowen and Wilhem are directed to smoking apparatuses, Bowen discloses the wrapper may be made of any material that does not product harmful gases, Wilhem discloses a woven tobacco wrapper that is elastic and resistant to destructive forces, and this involves substituting one known wrapper for another in a similar smoking article to yield predictable results.
The smokeable material (Bowen: 31, Fig. 5-8) and wrapper (Wilhem: 4, Fig. 4) are both formed of tobacco leaves. Therefore, the inhalable substance and wrapper are considered to have the same combustion properties.
In regards to the limitations directed to heat applied from a vaporizer heat source, the Examiner notes that the claim is directed to a cartridge and is limited to the positively recited elements of the cartridge. A vaporizer heat source vaporizing the inhalable substance and wrapper without burning the wrapper, where heat from the vaporizer heat source is applied at a temperature lower than the combustion temperature of the wrapper such that the heat from the heat source transfers through the wrapper at a substantially similar temperature that does not burn the wrapper is claimed as intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case the cartridge (30, Fig. 5-8) disclosed by Bowen wrapped in the woven tobacco (4, Fig. 3, Fig. 4) disclosed by Wilhem is capable of being heated with a vaporizer heat source to vaporize the inhalable substance and wrapper without burning the wrapper, such that when heat from the vaporizer heat source is applied at a temperature lower than the combustion temperature of the wrapper such that the heat from the heat source transfers through the wrapper at a substantially similar temperature that does not burn the wrapper.
Regarding claim 9, Bowen discloses a vaporization device (10, Fig. 2), comprising
A vaporization chamber (15) for receiving a cartridge and a heater (16) that heats the cartridge to generate vapor (Fig.2, [0027, 0031]).
The device is calibrated to a temperature intended to vaporize the smokeable material ([0053]). Calibrating the device to an appropriate temperature for vaporizing the smokeable material is considered to meet the claim limitation of “heat from the heating element is applied at a temperature lower than the combustion temperature of the wrapper”.
The cartridge (30) comprises a smokeable material (31) enclosed in a wrapper (32, Fig. 5-8, [0061])
The wrapper (32) may be made of any material that does not produce harmful gases at operating temperatures of the device ([0064, 0072]).
The smokeable material (31) is loose leaf tobacco ([0051-0052]).
Bowen does not explicitly disclose the smokeable material and wrapper have the same combustion properties.
However, Wilhem, directed to a cigarette (Fig. 3), discloses:
A tobacco wrapper for a cigarette that is elastic and resistant to destructive forces (Fig. 3, Fig. 4, lines 4-10, lines 80-85)
The wrapper (4, Fig. 3, Fig. 4) is formed by cutting tobacco leaves into strips, spinning the strips into threads, and weaving a fabric of the tobacco threads (lines 10-40).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bowen by substituting the wrapper with the woven tobacco wrapper as taught by Wilhem because both Bowen and Wilhem are directed to smoking apparatuses, Bowen discloses the wrapper may be made of any material that does not product harmful gases, Wilhem discloses a woven tobacco wrapper that is elastic and resistant to destructive forces, and this involves substituting one known wrapper for another in a similar smoking article to yield predictable results.
The smokeable material (Bowen: 31, Fig. 5-8) and wrapper (Wilhem: 4, Fig. 4) are both formed of tobacco leaves. Therefore, the inhalable substance and wrapper are considered to have the same combustion properties.
Bowen discloses a heater (16) that heats the cartridge to generate vapor (Fig.2, [0027, 0031]), where the cartridge comprises a smokeable material (31) in the form of loose leaf tobacco ([0051-0052]). Wilhem discloses a woven tobacco wrapper made of tobacco leaves (4, Fig. 3, Fig. 4, lines 10-40). Therefore, heat from the heater (Bowen: 16) would be expected to vaporize the tobacco (Bowen: 31) and tobacco wrapper (Wilhem: 4, Fig. 4) without burning the wrapper and heat from the heater (Bowen: 16) applied at a temperature below the combustion temperature of the woven tobacco wrapper (Wilhem: 4, Fig. 4) would be expected to transfer through the wrapper at a substantially similar temperature that does not burn the wrapper.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Bowen (US 20170181468 A1) in view of Wilhem (US 1964417 A), as applied to claims 1 and 9 above, further in view of Garrett (US 20210345666 A1).
Regarding claims 8 and 16, Bowen discloses the cartridge (30) is shaped to fill the chamber to maximize surface contact ([0012, 0030]).
Bowen or Wilhem do not explicitly disclose the wrapper forms a pod formed by sewing, sonically sealing, or compressing together the edges of two circular pieces of fabric to enclose the inhalable substance.
However, Garrett, directed to a pod (105) for use with a smoking device ([0024], Fig. 1C), discloses:
A pod (105, 505) comprising a circular cover (120) and a hemisphere shaped insert (110,510) which is considered to be a circular piece (Fig. 1C, Fig. 5B, [0024, 0048]).
The cover (120) is attached to the insert (110) by applying glue on the peripheral edge (135) of the cover (120) and pressing the cover (120) onto the top edges of the insert (110, Fig. 1A, [0034]) which is considered to be compressing the circular piece together near the edges.
The insert (505) can be shaped and formed to according to sizes and shapes of smoking pipe receptacles (Fig. 5A, Fig. 5B, [0024, 0048]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bowen, Wilhelm, by forming the cartridge of two circular pieces compressed together near the edges as taught by Garrett because both Bowen and Garrett are directed to smoking pods/cartridges, Bowen discloses the cartridge is shaped to maximize surface contact and Garrett discloses a pod formed of two circular pieces that is formed according to the shape and size of a receptacle, and this involves applying a known shape to a similar cartridge to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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