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
Claims 1-13 are cancelled. Claims 14-26 are presently examined.
Applicant’s arguments regarding the objection to the drawings have been fully considered. The objection of 5/22/2026 is withdrawn.
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 14, 16-23 and 26 are rejected under 35 U.S.C. 103 as being obvious over Watanabe (US 2021/0368859) in view of Crump (US 12,514,294).
Regarding claims 14, 16-18 and 21-22, Watanabe discloses a cigarette filling aggregate for an electronic cigarette cartridge [0001], which is considered to meet the claim limitation of an aerosol forming substrate, having a glycerin aerosol former added at 10% by mass to 40% by mass [0056] and a binder [0076]. The binder is methylcellulose [0059]. The filling contains microcrystalline cellulose [0061] in powder form [0062] at 1% to 15% of the overall content of the cigarette filling [0063], which are considered to be weights by mass since they are relative to the overall amount of filling. Watanabe does not explicitly disclose (a) the aerosol forming having a content of greater than 30 weight percent and (b) using hydroxypropylmethyl cellulose instead of methylcellulose.
Regarding (a), one of ordinary skill in the art would recognize that the claimed range is obvious. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding (b), Crump teaches an aerosol source member for use with an aerosol delivery device that is heated by inductive heating (abstract) having a binder that is either methylcellulose or hydroxypropylmethylcellulose (column 16, lines 42-67, column 17, lines 1-16).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the methylcellulose of Watanabe for the hydroxypropylmethylcellulose of Crump. One would have been motivated to do so since Crump teaches that methylcellulose and hydroxypropylmethylcellulose are equivalent binders for aerosol generating materials. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP § 2143, B.
Regarding claims 19 and 20, the microcrystalline cellulose powder is considered to be made up of cellulose fibers since it contains cellulose, a material that is itself made up of fibers.
Regarding claim 23, Watanabe discloses that the binder contains sodium carboxymethylcellulose in combination with the other binder components [0059].
Regarding claim 26, Watanabe discloses that the cigarette filling aggregate is used in an article which is smoked in an electronic cigarette [0003], which is considered to meet the claim limitation of an aerosol generating article.
Claims 15 and 24-25 are rejected under 35 U.S.C. 103 as being obvious over Watanabe (US 2021/0368859) in view of Crump (US 12,514,294) as applied to claims 14 and 23 above, and further in view of John (US 10,271,578).
Regarding claim 15, modified Watanabe teaches all the claim limitations as set forth above. Modified Watanabe does not explicitly teach a binder weight.
John teaches an aerosol generating material (abstract) having a binder that provides desired properties (column 9, lines 7-13) and is provided at 15-30% by weight (column 9, lines 14-20).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the binder of modified Watanabe at the weight of John. One would have been motivated to do so since John teaches a suitable binder weight to provide an aerosol generating material with desired properties.
Regarding claims 24 and 25, modified Watanabe teaches all the claim limitations as set forth above. Watanabe discloses that the binder contains sodium carboxymethylcellulose in combination with the other binder components [0059]. Modified Watanabe does not explicitly teach a weight of the sodium carboxymethylcellulose in the binder.
John teaches an aerosol generating material (abstract) having a binder that provides desired properties (column 9, lines 7-13) and is provided at 15-30% by weight (column 9, lines 14-20).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the sodium carboxymethylcellulose of modified Watanabe at the weight of John. One would have been motivated to do so since John teaches a suitable binder weight to provide an aerosol generating material with desired properties. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27-29 of copending Application No. 18/562,468 (hereafter referred to as Lauenstein).
Regarding claims 14 and 16-18, Lauenstein claims an aerosol forming substrate for use in an aerosol generating system comprising an aerosol former at 40-60 weight percent based on the overall weight and a cellulose based strengthening agent in the form of cellulose powder at between 4-25 weight percent, based on the overall weight (claim 27). The aerosol forming substrate also contains hydroxypropylmethyl cellulose (claim 28).
Regarding claim 15, Lauenstein claims the hydroxypropylmethyl cellulose present at 16-23 weight percent (claim 28).
Regarding claims 19 and 20, the cellulose powder of Lauenstein is considered to comprise fibers since cellulose is made up of fibers.
Regarding claims 21 and 22, Lauenstein claims all the claim limitations as set forth above. Lauenstein additionally discloses that the strengthening agent can be either cellulose powder or microcrystalline cellulose (claim 27). Lauenstein does not explicitly claim the microcrystalline cellulose being in powder form.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the microcrystalline cellulose of Lauenstein in powder form. One would have been motivated to do so since Lauenstein claims that powder is suitable form for providing cellulosic strengthening agents in aerosol forming substrates.
Claim 23 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 27-29 of copending Application No. 18/562,468 (hereafter referred to as Lauenstein) in view of Watanabe (US 2021/0368859).
Regarding claim 23, Lauenstein claims all the claim limitations as set forth above. Lauenstein does not explicitly claim the aerosol forming substrate comprising carboxymethyl cellulose.
Watanabe teaches a cigarette filling aggregate for an electronic cigarette cartridge [0001] having a binder [0076]. The binder includes carboxymethyl cellulose mixed with other components [0059].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the substrate of Lauenstein with the carboxymethyl cellulose of Watanabe. One would have been motivated to do so since Watanabe teaches that carboxymethyl cellulose can be combined with other components in a binder for an aerosol generating substrate. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Claims 14-21, 23 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-40 of copending Application No. 18/723,529 (hereafter referred to as Fasciani) in view of John (US 10,271,578).
Regarding claims 14, 16-18, Fasciani claims an aerosol generating article for an aerosol generating system that has an aerosol generating substrate comprising an aerosol former present at at least 45 percent by weight and a cellulose based agent (claim 21). The substrate also has hydroxypropyl methylcellulose as a film forming agent (claim 35). The cellulose based strengthening agent is cellulose powder (claim 36). Fasciani does not explicitly claim a concentration of the cellulose based strengthening agent.
John teaches an aerosol generating material (abstract) having a binder that provides desired properties (column 9, lines 7-13) and is provided at 15-30% by weight (column 9, lines 14-20). The binder is a cellulosic binder (column 8, lines 66-67, column 9, lines 1-6).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the strengthening agent of Fasciani at the weight of John. One would have been motivated to do so since John teaches a suitable binder weight to provide an aerosol generating material with desired properties.
Regarding claims 19 and 20, the cellulose powder of Fasciani is considered to comprise cellulose fibers since cellulose is inherently fibrous.
Regarding claim 21, Fasciani claims that the strengthening agent can also contain microcrystalline cellulose (claim 36).
Regarding claim 23, Fasciani claims that the film forming agent can also contain carboxymethyl cellulose (claim 35).
Regarding claim 26, Fasciani claims an aerosol generating system comprising the aerosol generating substrate.
Claims 14, 16-21, 23 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-35 of copending Application No. 18/867,304 (hereafter referred to as Binassi).
Regarding claim 14, 16-18, Binassi claims an aerosol generating article having an aerosol forming substrate having a hydroxpropyl methylcellulose film former and an aerosol former at at least 35 percent by weight (claim 16). The substrate also has a cellulose based strengthening agent that is cellulose powder (claim 29). The strengthening agent is present at between 5 percent and 30 percent on a dry weight basis (claim 30).
Regarding claims 19 and 20, the cellulose powder is considered to be made up of cellulose fibers since it contains cellulose, a material that is itself made up of fibers.
Regarding claim 21, Binassi claims that the strengthening agent includes microcrystalline cellulose (claim 29).
Regarding claim 23, Binassi claims that the film forming agent comprises carboxymethyl cellulose (claim 28).
Regarding claim 26, Binassi claims that the aerosol forming substrate is part of an aerosol generating system (claim 35).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the claimed invention produces advantages that are unknown in the prior art, (b) that the teachings of Watanabe and Crump cannot be combined since they rely on different manufacturing methods, (c) that one of ordinary skill in the art would be unable to select the hydroxypropylmethyl cellulose from the various binders listed in Crump, (d) that the manufacturing method of John is incompatible with the manufacturing method of Watanabe, (e) that the binder range of John is not a range of hydroxypropylmethyl cellulose binder specifically, (f) that the rejections are based on hindsight reasoning, and (g) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case, the cited references teach motivation to combine the references as set forth above.
Regarding (b), while there may indeed be differences in the manufacturing methods, the instant claims are directed to a product, not a method, and there is no requirement that the claimed invention be manufactured by the method of either Watanabe or Crump. Furthermore, both Watanabe and Crump teach smoking materials that are heated to generate an aerosol. One of ordinary skill in the art would therefore expect binders effective in one such smoking material to be effective in another smoking material since both materials are subjected to similar stresses of being heated and having an aerosol pass through them.
Regarding (c), Crump expressly teaches that methylcellulose and hydroxypropylmethylcellulose are both known to be used as a binder in an aerosol source member (column 16, lines 42-67, column 17, lines 1-6), which is an art recognized equivalence indicating that it is obvious to select or the other. See MPEP § 2144.08 II 4 (b).
Regarding (d), while there may indeed be differences in the manufacturing methods, the instant claims are directed to a product, not a method, and there is no requirement that the claimed invention be manufactured by the method of any Watanabe, Crump or John. Furthermore, all of Watanabe, Crump and John teach smoking materials that are heated to generate an aerosol. One of ordinary skill in the art would therefore expect binders and binder concentrations effective in one such smoking material to be effective in another smoking material since all materials are subjected to similar stresses of being heated and having an aerosol pass through them.
Regarding (e), John states that modifieds cellulose are included in its binders (column 8, lines 60-65), which hydroxypropylmethyl cellulose is. John further teaches hydroxypropyl cellulose and other modified celluloses specifically as binders (column 8, lines 66-67, column 9, lines 1-6). One of ordinary skill in the art would therefore recognize that the ranges of John would also be applicable to binders within similar compositions as the specifically named ones such as hydroxypropylmethyl cellulose.
Regarding (f), it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Regarding (g), all claims including the independent claim are rejected as set forth above.
Regarding the non-statutory double patenting rejections, applicant’s arguments have been fully considered but they are not persuasive. Rejection at this time is appropriate since the other applications all remain pending. All double patenting rejections will be reevaluated in light of any claim amendments that may be entered in the future but not before such amendments have been entered.
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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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.
/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
Prosecution Insights