CTFR 18/250,001 CTFR 86493 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 1-3, 5, 7, 10, 11, 13, 15, 17, 18, 21, 23, 25, 27, 28, 31-35, 37, 38, 43, 44, 48-50, and 57-63 are pending. Claims 33-35, 37-38, 43-44, and 48-50 are withdrawn. Claims 1, 3, 5, 11, 13, 15, 17, 18, 21, 25, and 28 have been amended. Claims 57-63 have been added. Claim Objections 07-29-01 AIA Claim s 48 and 50 are objected to because of the following informalities: the claims are “Withdrawn” but the status identifier on both claims is “Previously Presented” . Appropriate correction is required. 07-29-01 AIA Claim 61 is objected to because of the following informalities: the claim states “the volume” but does not specify that it is the volume of the aerosol-generating section . Appropriate correction is required. Response to Arguments 07-37 AIA Applicant's arguments filed 3/18/2026 have been fully considered but they are not persuasive. Applicant Argument A: Regarding the argument that Zhao is not concerned with addressing the negative sensory consequences that are traditionally associated with incorporating expanded tobacco into a THP article and that whilst paragraph [0025] notes that the inclusion of expanded tobacco provides better aroma and sensory properties, this is in comparison with "expanded cut stem", which itself is known in the art to exhibit poor sensory properties when included in a THP article. Examiner Response A: 07-37-07 The Examiner respectfully disagrees. 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). Applicant Argument B: Zhao does not teach the inclusion of an aerosol former in order to mitigate the negative sensory properties that would traditionally be associated with using expanded tobacco in an article for use with a non-combustible aerosol provision system. The Examiner considers the disclosure of Baggett to make up for this deficiency. Applicant disagrees with this analysis. Column 12 lines 34-39 of Baggett, as referenced by the Examiner, discloses that glycerine is added to the tobacco material 70 at levels of about 10% to 14% by dry weight of the tobacco material 70. Tobacco material 70 is tobacco flavour material provided with a base web 68 to form a tobacco web 66 (see column 9, lines 6 to 12). The tobacco web 66 is in tubular form and surrounds the tobacco plug 80, cavity 91, and tubular filter element 74 (see Figures 4a and 4b). Indeed, the glycerine is said to be included in the tobacco flavour material 70 as a humectant which allows the sheet to be rolled into the tubular form to surround the rod elements (see column 12, lines 34 to 43). However, it is important to note that the tobacco material 70 is only one component of the aerosol-generating material in the aerosol-generating article of Baggett. The tobacco plug 80 is also aerosol-generating material and there is no mention of this tobacco material including an aerosol former material such as glycerine. As the tobacco plug 80 will comprise significantly more aerosol-generating material than the sheet of tobacco flavour material 70, the glycerine will be present at levels of significantly less than 10% by dry weight of the total aerosol-generating material of Baggett. A person of ordinary skill in the art would therefore not arrive at the subject- matter of the amended claims upon combining the teaching of Zhao and Baggett as Baggett does not disclose aerosol former in an amount of at least about 10% by weight of the aerosol-generating material. Examiner Response B: The Examiner respectfully disagrees. The Applicant is arguing Baggett individually, not the combination of Zhao and Baggett. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller , 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Zhao is relied upon to teach an aerosol generating material, but does not expressly teach the amount of aerosol former in the aerosol generating material. Baggett teaches an aerosol generating material which includes glycerin. While there may be other aerosol generating materials in Baggett, the claims are not directed to the amount of aerosol former by weight of the entire article but rather just by weight of an aerosol-generating material component. This amount serves as an effective amount of humectant and an aerosol precursor (Baggett, col. 12, lines 34-39) and to meet consumer preferences in the US and other markets (Baggett, col. 12, lines 65-67). Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-15-aia AIA Claim(s) 1-3, 5, 7, 10, 11, 13, 15, 17, 18, 21, 23, 27, 32, 57 and 59 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Zhao (CN110301676, as cited in the IDS dated 4/21/2023) and further in view of Baggett (US 5499636) . US 20210161197 is applied as a translation of CN110301676. All citations to ‘Zhao’ refer to US 20210161197. Regarding claims 1 and 17, Zhao teaches an article for use with a non-combustible aerosol provision system [0031], wherein the article comprises an aerosol-generating material (“tobacco matrix”) comprising one or more botanical materials, specifically tobacco [0007] wherein at least one of the botanical materials, expanded tobacco, has a fill value of 4.5 cm 3 /g to 7.5 cm 3 /g [0018], with multiple specific examples of expanded tobacco with a fill value of greater than about 6 cm 3 /g. Particularly Zhao teaches expanded tobacco with fill values of 7.12 cm 3 /g (Embodiments 3, 4 and 9, Table 1, [0048]; and Comparative Examples 2 and 3, [0058]-[0059]), 6.21 cm 3 /g (Embodiment 7, Table 1, [0048]), 6.07 cm 3 /g (Embodiment 8, Table 1, [0048]), respectively. Zhao does not expressly teach the amount of aerosol former in the aerosol generating material. Baggett teaches a cigarette adapted for use in an electrical cigarette system comprising a tobacco rod (abstract). Baggett teaches that glycerin is added to the tobacco material as an aerosol precursor at about 10-14% (col. 12, lines 34-39). It would have been obvious for one of ordinary skill in the art at the time of filing to have included glycerin in the amount of about 10-14% in the aerosol generating material of Zhao, as suggested by Baggett, with a reasonable expectation of success and predictable results of serving as an effective amount of humectant and an aerosol precursor (Baggett, col. 12, lines 34-39), and to meet consumer preferences in the US and other markets (Baggett, col. 12, lines 65-67). Regarding claims 2, 10 and 18, Zhao teaches that the aerosol-generating material is prepared from a composition, the composition comprising the one or more botanical materials [0007], wherein one botanical materials having a fill value of greater than about 6 mL/g, specifically expanded tobacco, is present in an amount of preferably 15% to 30% by weight of the composition [0016]. Regarding claim 3, Zhao teaches that at least one of the botanical materials is expanded tobacco, specifically expanded stem tobacco [0024]. Regarding claim 5, Zhao teaches that the aerosol-generating material (“tobacco matrix”) has a fill value of 0.25 g/cm 3 , or 4 mL/g [0045]. Regarding claim 7, Zhao teaches that at least one of the botanical materials is lamina tobacco [0007]. Regarding claim 11, Zhao teaches that the article comprises an aerosol generating section (“heat not burn tobacco matrix section”) comprising the aerosol-generating material (“tobacco matrix”) [0031]. Regarding claim 13, regarding the limitation that “wherein the aerosol-generating section has a hardness of between about 50% and 80%,” the courts have ruled that where the claimed and prior art products are identical or substantially identical in structure or composition, claimed properties are presumed to be inherent. See MPEP 2112.01 I. Zhao teaches the claimed composition limitations and thus it is inherent that the aerosol-generating section has a hardness of between about 50% and 80% since such a property is evidently dependent upon the nature of the composition used. Regarding claim 15, regarding the limitation, “at least one of the botanical materials is prepared by a process comprising increasing a temperature of a first botanical material so as to cause release of at least some of a fluid from the first botanical material to form a second botanical material,” this is a product by process claim limitation. The steps and parameters for the process for making the at least one of the botanical materials do not add patentable details to this invention, as no structural characteristics are associated with the step in the specification. Furthermore, the prior art discloses the same structural characteristics as the instantly claimed invention. The courts have held that once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. See MPEP 2113. Regarding claim 21, Zhao teaches that the article comprises an aerosol-generating section defining a continuous volume, wherein the volume is substantially filled with the aerosol-generating material [0007],[0031]-[0033]. Regarding claim 23, regarding the limitation, “wherein the aerosol-generating material comprises a first botanical material prepared by an expansion process comprising increasing a temperature of a second botanical material so as to cause release of at least some of a fluid from the second botanical material to form the first botanical material,” this is a product by process claim limitation. The steps and parameters for the process for making the first botanical material do not add patentable details to this invention, as no structural characteristics are associated with the step in the specification. Furthermore, the prior art discloses the same structural characteristics as the instantly claimed invention. The courts have held that once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. See MPEP 2113. Regarding claim 27, Zhao teaches that the aerosol-generating material comprises botanical material having a fill value of greater than about 6 mL/g, specifically expanded tobacco, in an amount of preferably 15% to 30% by weight of the composition [0016]. Zhao teaches that the aerosol generating material comprises expanded tobacco, leaf tobacco and/or a tobacco sheet [0007]. As Zhao expressly teaches that the expanded tobacco is included in an amount of 15% to 30% by weight, thus the leaf tobacco and/or tobacco sheet are included in a maximum amount of up to about 70% by weight. Regarding claim 32, regarding the limitation that “the fill value is measured according to Test Method A,” the claims are directed to a product, thus the process of measuring the product does not add patentable weight to the limitation. Furthermore, absent evidence to the contrary, the “fill value” in Zhao is deemed to be the same unit of measure as the “fill value” in the instant specification. Regarding claim 57, Zhao teaches an article for use with a non-combustible aerosol provision system [0031], wherein the article comprises an aerosol-generating material (“tobacco matrix”) comprising one or more botanical materials, specifically tobacco [0007] wherein at least one of the botanical materials, expanded tobacco, has a fill value of 4.5 cm 3 /g to 7.5 cm 3 /g [0018]. Zhao teaches specific embodiments where the fill value of the botanical material has a fill value of less than about 6 mL/g, specifically Embodiments 5, 6, 10 and 11 have fill values of less than about 6 mL/g ([0048]). Regarding claim 59, Zhao teaches that the aerosol-generating material comprises botanical material having a fill value of greater than about 6 mL/g, specifically expanded tobacco, also known as “the second botanical material”, which has a fill value of 4.5 cm 3 /g to 7.5 cm 3 /g [0018], with multiple specific examples of expanded tobacco with a fill value of greater than about 6 cm 3 /g. Particularly Zhao teaches expanded tobacco with fill values of 7.12 cm 3 /g (Embodiments 3, 4 and 9, Table 1, [0048]; and Comparative Examples 2 and 3, [0058]-[0059]), 6.21 cm 3 /g (Embodiment 7, Table 1, [0048]), 6.07 cm 3 /g (Embodiment 8, Table 1, [0048]), respectively . 07-22-aia AIA Claim (s) 25, 28 and 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao and Baggett as applied to claim 1 above, and further in view of Robinson (US 20080092912) . Regarding claims 25, 28 and 63, modified Zhao does not expressly teach that the aerosol-generating material comprises an amorphous solid. Robinson teaches an aerosol generating material (“cigarette”) that is incorporated within an electrically powered aerosol generating device (abstract). Robinson teaches including expanded tobacco in the aerosol generating material ([0050],[0052] and [0053]). Robinson also teaches including an amorphous solid within the aerosol generating material, specifically a film comprising about 65-70 weight parts glycerin, about 25-30 weight parts pectin, about 5 weight parts flavoring agent, and about 2 to about 10 weight parts filler [0068]. It would have been obvious for one of ordinary skill in the art at the time of filing to have incorporated the amorphous solid of Robinson into the aerosol-generating material of modified Zhao, as suggested by Robinson because it provides an alternative means of incorporating additional aerosol-forming material into the smoking article. Regarding claim 62, modified Zhao does not expressly teach that the aerosol-generating material comprises the amorphous solid in an amount of from about 5 wt% to about 30 wt%. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of the amorphous solid in the aerosol-generating material since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount of the amorphous solid in the aerosol-generating material is critical and has unexpected results. In the present invention, one would have been motivated to optimize the amount of the amorphous solid in the aerosol-generating material motivated by the desire to ensure that the article exhibits acceptable sensory and organoleptic properties, and desirable performance characteristics ([0069]) . 07-22-aia AIA Claim (s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao and Baggett as applied to claim 1 above, and further in view of Nguyen (US 20080135057) . Regarding claim 31, modified Zhao does not expressly teach the moisture content of the expanded tobacco (which has a fill value of greater than about 6 mL/g). Nguyen teaches a system for producing expanded tobacco (abstract). Nguyen teaches that expanded tobacco is processed to achieve a final moisture content of about 11% [0040], which is within the claimed range of about 8% and about 15%. It would have been obvious for one of ordinary skill in the art at the time of filing to have made the expanded tobacco of modified Zhao have a moisture content of about 11%, as suggested by Nguyen, because that is the moisture content that is necessary for further processing of expanded tobacco (Nguyen, [0040]) . 07-22-aia AIA Claim (s) 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao and Baggett as applied to claim s 11 , above, and further in view of Horsewell (US 4088142) . Regarding claim 58, modified Zhao does not expressly teach a pressure drop across the aerosol-generating section. Horsewell teaches that the pressure drop of the tobacco rod is 41 to 45 mm WG (Example 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the pressure drop across the aerosol-generating section of modified Zhao the same as across a tobacco rod in a traditional cigarette, as taught by Horsewell, to make the resistance to draw for the user similar in the aerosol-generating article as in a cigarette to increase smoking pleasure . 07-22-aia AIA Claim (s) 60 and 61 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao and Baggett as applied to claim s 17 and 21 , above, and further in view of Hopps (GB 2562764) . Regarding claim 60, modified Zhao does not expressly teach the mass of aerosol generating material. Hopps teaches a tobacco-containing article for an aerosol generating device (abstract). Hopps teaches that the mass of aerosol generating material, specifically tobacco derived material, in the article is 250 mg tobacco derived material (page 5, line 59- page 6, line 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have looked to Hopps, which teaches a similar product, specifically a tobacco-containing article for an aerosol generating device, for the value of a common characteristic, specifically the mass of aerosol generating material, since modified Zhao is silent to that specific characteristic, and applying the mass of the aerosol generating material of Hopps to modified Zhao would have resulted in a reasonable expectation of success and predictable results. Regarding claim 61, modified Zhao does not expressly teach the volume of the aerosol generating section. Hopps teaches a tobacco-containing article for an aerosol generating device (abstract). Hopps teaches that the aerosol generating section is 17 mm with a 8 mm diameter (page 5, lines 56-59), which comes to 854.08 mm 2 (volume= pi*r 2 *l= 3.14*4*4*17). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have looked to Hopps, which teaches a similar product, specifically a tobacco-containing article for an aerosol generating device, for the value of a common characteristic, specifically the volume of the aerosol generating section, since modified Zhao is silent to that specific characteristic, and applying the volume of the aerosol generating section of Hopps to modified Zhao would have resulted in a reasonable expectation of success and predictable results. Conclusion 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). 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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday. 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. /YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755 Application/Control Number: 18/250,001 Page 2 Art Unit: 1755 Application/Control Number: 18/250,001 Page 3 Art Unit: 1755 Application/Control Number: 18/250,001 Page 4 Art Unit: 1755 Application/Control Number: 18/250,001 Page 5 Art Unit: 1755 Application/Control Number: 18/250,001 Page 6 Art Unit: 1755 Application/Control Number: 18/250,001 Page 7 Art Unit: 1755 Application/Control Number: 18/250,001 Page 8 Art Unit: 1755 Application/Control Number: 18/250,001 Page 9 Art Unit: 1755 Application/Control Number: 18/250,001 Page 10 Art Unit: 1755 Application/Control Number: 18/250,001 Page 11 Art Unit: 1755 Application/Control Number: 18/250,001 Page 12 Art Unit: 1755 Application/Control Number: 18/250,001 Page 13 Art Unit: 1755 Application/Control Number: 18/250,001 Page 14 Art Unit: 1755 Application/Control Number: 18/250,001 Page 15 Art Unit: 1755
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