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
Claims 16, 18-29, and 31 are pending and are subject to this office action. Claim 30 is previously withdrawn from consideration. Claim 16 has been amended. Claim 17 is canceled. Claim 31 is newly added.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/23/2026 has been entered.
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 03/23/2026 containing amendments and remarks to the claims.
The corrected drawings filed 03/23/2026 are acceptable. The drawings properly label the heater assembly (120) and the mouthpiece (110) in Fig. 1. Therefore, the objection to the drawings is withdrawn.
Response to Arguments
Applicant’s arguments, see 7-11, filed 03/23/2026, with respect to the rejection of claim 16 under 35 U.S.C. 103 have been fully considered and are persuasive. Applicant has amended claims 16 to limit the plurality of carboxylic acids to benzoic acid and lactic acid. Applicant previously provided examples (see Non Patent Literature dated 11/20/2025) that appear to demonstrate that a formulation comprising a combination of benzoic acid and lactic acid exhibits unexpected results of inhibiting corrosion resistance of a heating element over a formulation where the carboxylic acid comprises lactic acid only. Bowen discloses a liquid nicotine formulation comprising a list of carboxylic acids which includes benzoic acid and lactic acid ([0053, 0056]) but does not explicitly disclose an embodiment where the plurality of carboxylic acids consists of benzoic acid and lactic acid. Further, Bowen does not appear to disclose a motivation for selecting benzoic acid and lactic acid from the list of carboxylic acids. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of newly found prior art.
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 16, 18-29, and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Kashima (US 20220369691 A1) in view of McAdam (US 20180279667 A1).
Regarding claims 16 and 31, Kashima discloses a liquid composition for a liquid heating-type flavor inhaler (claim 1, [0065-0069]) comprising:
Nicotine, propylene glycol and glycerol (“a liquid carrier”), benzoic acid, and lactic acid (claims 1-3, [0065-0069, 0075, 0078]).
The molar ratio of nicotine to total carboxylic acid is 3:0.1 to 0.1:3 ([0074]). The claimed ranges overlap with the range taught by the prior art and are therefore considered prima facie obvious.
The molar ratio of nicotine to benzoic acid is 1:0.9 to 1:0.1 (claim 7, [0079]). The claimed ranges overlap with the range taught by the prior art and are therefore considered prima facie obvious.
The Examiner notes that while Kashima discloses the composition may comprise additional acids besides benzoic acid and lactic acid ([0076]), Kashima does not require that the additional acids be included (e.g. claims 1-3, [0075]). Therefore, Kashima discloses an embodiment comprising a plurality of carboxylic acids consisting of benzoic and lactic acid.
Kashima does not explicitly disclose the nicotine content is less than or equal to 4 wt%.
However, McAdam, directed to a nicotine solution ([0011]), discloses:
A nicotine solution comprising less than 6% by weight of nicotine ([0056, 0080]). The claimed ranges overlap with the range taught by the prior art and are therefore considered prima facie obvious.
The nicotine can be provided in a suitable amount based on the desired dosage to be inhaled by the user ([0056]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Kashima by providing the nicotine in an amount of 6 wt% of less as taught by McAdam because both Kashima and McAdam are directed to liquid nicotine formulations, McAdam discloses a range of nicotine content to provide a desired dosage to the user, and this involves applying nicotine in a known amount in a similar liquid nicotine formulation to yield predictable results.
Regarding claims 18-20, Kashima discloses the molar ratio of nicotine to total carboxylic acid is 3:0.1 to 0.1:3 ([0074]). The claimed ranges overlap with the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claims 21-23, Kashima discloses the molar ratio of nicotine to benzoic acid is 1:0.9 to 1:0.1 (claim 7, [0079]). The claimed ranges overlap with the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 24, Kashima does not explicitly disclose the molar ratio of benzoic acid to total carboxylic acid. However, as discussed above, Kashima discloses the molar ratio of nicotine to total carboxylic acid is 3:0.1 to 0.1:3 ([0074]) and the molar ratio of nicotine to benzoic acid is 1:0.9 to 1:0.1 (claim 7, [0079]). Therefore, a person having ordinary skill in the art, in view of the disclosed molar ratios, could have reasonably arrived at a formulation where the range of molar ratios of benzoic acid to total carboxylic acid overlaps with the claimed range of greater than or equal to 0.2:1 and is therefore considered prima facie obvious.
Regarding claim 25, Kashima does not explicitly disclose the molar ratio of benzoic acid to total carboxylic acid. However, as discussed above, Kashima discloses the molar ratio of nicotine to total carboxylic acid is 3:0.1 to 0.1:3 ([0074]) and the molar ratio of nicotine to benzoic acid is 1:0.9 to 1:0.1 (claim 7, [0079]). Therefore, a person having ordinary skill in the art, in view of the disclosed molar ratios, could have reasonably arrived at a formulation where the range of molar ratios of benzoic acid to total carboxylic acid overlaps with the claimed range of less than or equal to 0.8:1 and is therefore considered prima facie obvious.
Regarding claim 26, Kashima does not explicitly disclose the weight percentage of the total carboxylic acid content in the liquid formulation. However, as discussed above, Kashima in view of McAdam, discloses a range of nicotine weight percentages, a range molar ratios of nicotine to carboxylic acid, a range of molar ratios of nicotine to benzoic acid, and carboxylic acid mixtures consisting of benzoic and lactic acid. Therefore, a person having ordinary skill in the art could have reasonably arrived at a liquid formulation with a total carboxylic acid contact with a weight percentage range that overlaps with the claimed range.
Regarding claim 27, Kashima discloses the liquid carrier comprises propylene glycol and glycerol ([0065-0069])
Regarding claim 28, Kashima discloses a ratio (i.e. a weight ratio) of propylene glycol to glycerol is 1:1 to 1:3 ([0081]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
Regarding claim 29, Kashima discloses the liquid composition has a water content of 10 wt% or less ([0082]). The claimed range overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
Conclusion
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/M.F.D./Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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