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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-17, drawn to an aerosol generating material, in the reply filed on December 17, 2025 is acknowledged. The traversal is on the ground(s) that there is allegedly no undue burden to examine all of the claims in the application because the Examiner in the international PCT application (PCT/GB2021/052808) examined all of the claims as evidenced by the International Search Report/Written Opinion dated February 22, 2022.
The argument is not persuasive because undue burden (specifically search burden) is not germane to a restriction under unity of invention. Rather, the claims must be linked by a special technical feature to form a single general inventive concept under PCT rule 13.1. As explained in the restriction requirement mailed November 04, 2024, the claims are not linked by a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18–26 are withdrawn.
Priority
The clean version of Applicant’s claims filed on May 5, 2023 (“Claims”) was compared to the original claims filed on May 5, 2023 (“Original Claims”), the clean specification filed on May 5, 2023 (“Clean Specification”), the claims in the 371 of WO 2022096860 filed October 29, 2021 (“PCT Claims”), the claims in Foreign Priority GB2017532.9 filed November 5, 2020 (“Foreign Priority Claims”) and the specification in Foreign Priority GB2017532.9 filed November 5, 2020 (“Foreign Priority Specification”), the claims in Foreign Priority GB2114586.7 filed October 12, 2021 (“Foreign Priority Claims”) and the specification in Foreign Priority GB2114586.7 filed October 12, 2021 (“Foreign Priority Specification”). The results of the comparison are summarized as follows:
Claims 1–17 have priority back to November 5, 2020 because they are fully supported by either the Foreign Priority Claims or the Foreign Priority Specification of GB2017532.9.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 recites the limitation “the process comprises drying” which redefines the process of claim 2 upon which it depends. Examiner suggests the claim should be amended to read “the process further comprises drying.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “optionally a second binder”, the first time, lines 3-4, then the second recitation of the second binder, lines 6-7, does not recite that the second binder is optional. This language leads to a list of potential alternatives that can vary and ambiguity arises, (MPEP 2173.05(h). The ambiguity (e.g., does a personal of ordinary skill in the art include the second binder or not include the second binder), makes the claim indefinite. Similarly, claims 9-10 and 12, recite the second binder and are indefinite due to the second binder ambiguity created by claim 1 as discussed above, and further due to dependency upon rejected base claim 1.
Claim 1 recites the limitation “ the mixture comprising the first binder, the second binder and the filler in a total amount of between about 5% and about 15% by weight of the mixture.” The “amount of between about 5% and about 15% by weight of the mixture” is indefinite to the weight recited because it is referring to itself, e.g., the first binder, the second binder, and the filler comprise the mixture as claimed.
Claim 11 recites the limitation "the binder". There is insufficient antecedent basis for this limitation in the claim.
Claims 2-8, 11, and 13-17 are rejected based on dependency from a rejected base claim.
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.
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.
Claims 1, 4-7, 9-14, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jarriault et al. (WO 2019/129493, cited on May 5, 2023 IDS).
Regarding claim 1, Jarriault discloses a process for preparing an aerosol generating material (Abstract, Fig. 1, pg. 19, l. 11-13 ; a method for producing a sheet or a homogenized material containing alkaloids; reading over the preamble limitation of claim 1) comprising:
forming a first composition comprising a binder and an aerosol former (Fig. 1, pg. 22, l. 6-8; the method may include a suspension preparation step 104, where an aerosol-former 7 and a binder 8 are premixed; reading over a first composition of claim 1);
forming a second composition comprising a filler (Fig. 1, pg. 22, l. 4-6; a pulp preparation step 103 where cellulose fibers 5 and water are pulped to uniformly disperse and refine the fibers in water;, the cellulose fibers read over the second composition filler limitation of claim 1);
forming a third composition comprising a tobacco material (Fig. 1, pg. 19, l. 14-16; In a first step 100, a mixture of a material containing alkaloids, a reducing sugar and a first additive is formed. The material containing alkaloids is a tobacco material containing the alkaloid nicotine; the mixture includes 64-82% tobacco powder (percent in weight of the total mixture), reading over the tobacco material limitation of the second composition of claim 1).
Jarriault does not explicitly disclose combining the first composition and the second composition to form a mixture of the first composition and the second composition. However, Jarriault discloses combining the first, the second, and the third compositions in the slurry preparation step 102. The slurry preparation step 102 comprises transferring the premix solution of the aerosol-former and binder to a slurry mixing tank and transferring the pulp (i.e., the filler) to the slurry mixing tank and further dosing the extruded tobacco powder exiting the extruder (see step 101 sub-step 301; pg. 20, l. 14-22) into the slurry mixing tank with the pulp, and the guar – glycerol suspension (i.e., the binder – aerosol-former). Additional tobacco powder may be added as well. More, preferably, this step also, includes processing the slurry with a high shear mixer to ensure uniformity and homogeneity of the slurry (pg. 22, l. 11-15). Jarriault additionally discloses preferably, the slurry comprises from about 1 percent to about 10 percent in dry weight basis of the binder (pg. 15, l. 1-4); the amount of cellulose fibers added to the material containing alkaloids is comprised of between about 1 percent and about 7 percent in dry weight basis of the total weight of the slurry (pg. 16, l. 19-22). Therefore, the combined binder plus cellulose fibers in the slurry is from about 2 percent to about 17 percent in dry weight basis of the total weight of the slurry. The slurry formed in the preparation step 102 reads over a mixture comprising the first binder, and the second binder and the filler of claim 1.
The above combined binder plus cellulose fibers from about 2 percent to about 17 percentage in dry weight basis reads over a total amount of between about 5 % and 15% by weight of the first binder, the second binder and the filler of claim 1 since in the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Regarding “the second binder” recited in lines 6-7 of claim 1, the second binder is first recited as “optionally” in lines 3-4 of the claim, therefore Jarriault still properly reads over the second binder of claim 1.
Regarding the claimed mixture is formed by combining two compositions as compared to the prior art combines three compositions to form the mixture, Applicant does not supply any evidence demonstrating the forming of the mixture from two compositions serves a unique or critical function or purpose, or achieves results that would have been unexpected.
Jarriault further discloses processing the mixture of the first composition and second composition to form the aerosol generating material (Fig. 1, pg. 23, l. 5-7; In order to form the sheet including the homogenized tobacco material, preferably the slurry formed according to step 102 is cast in a casting step 105; reading over processing the mixture of the first composition and the second composition for form the aerosol generating material of claim 1.)
Regarding claim 4, Jarriault discloses the mixture of the first and the second composition has a volatile content of greater than about 20 wt% (pg. 5, l. 5-6; preferably, the slurry comprises from about 5 percent to about 30 percent in dry weight basis of the aerosol-former (e.g., volatile content) which completely encompasses the claimed amount of greater than about 20 wt% volatile content.
Regarding claims 5 and 6, Jarriault discloses the sheet including the homogenized material containing alkaloids has a water content (e.g., volatile content) of between about 7 percent and about 15 percent per weight after drying. Therefore the sheet including the homogenized material containing alkaloids has a lower volatile content than the slurry of Jarriault (see rejection of claim 4); reading over claim 5. The prior art water content of between about 7 percent and about 15 percent per weight after drying is encompassed by the claimed rang of less than about 20 wt% volatile content of claim 6.
Regarding claim 7, Jarriault discloses in first step 100, a mixture of particles of a material containing alkaloids is a tobacco material containing the alkaloid nicotine (pg. 19, l. 14-17). This reads over the particulate tobacco limitation of claim 7.
Regarding claims 9-10 and 12, the second binder was recited as “optionally” in claim 1 therefore, Jarriault still properly reads over claims 9-10 and 12.
Regarding claim 11, Jarriault discloses preferably, the slurry comprises from about 1 percent to about 10 percent in dry weight basis of the binder (pg. 15, l. 1-4) which reads over the claimed binder amount of greater than about 2% by weight since where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Regarding claim 13, Jarriault discloses the suspension preparation step 104 where preferably, the aerosol-former 7 includes glycerol (pg. 22, l. 6-8); which reads over the first composition is in a liquid phase due to the presence of glycerol. Jarriault further discloses in step 101 the mixture comprising tobacco powder (e.g., the “third composition of Jarriault) is receiving energy in an extruder 200 in sub-step 301 (Fig. 2 pg. 19, l. 14-17) wherein the extruded mixture slurry contains (percent in weight) 5-8% water and the extruded mixture is used in a subsequent slurry preparation step 102 (pg. 21, l. 16-18, 24 – pg. 22, l. 2). The extruded mixture slurry containing 5-8 wt% water, one of ordinary skill in the art would be reasonably suggested the extruded mixture slurry is a solid mixture. This reads over the second composition is in a solid phase.
Regarding claim 14, Jarriault discloses the amount of cellulose fibers added to the material containing alkaloids is comprised of between about 1 percent and about 7 percent in dry weight basis of the total weight of the slurry (pg. 16, l. 19-22) which reads over the claimed filler amount of greater than about 2% by weight since where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Regarding claim 17, Jarriault discloses preferably, this step (referring to step 102 pg. 22, l. 11) also, includes processing the slurry with a high shear mixer to ensure uniformity and homogeneity of the slurry (pg. 22, l. 11-15). This reads over the mixture is formed by homogenizing the first and the second composition.
Claims 2-3 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Jarriault et al. (WO 2019/129493, cited on May 5, 2023 IDS) as applied to claim 1, in view of Mua (US 2006/0021626).
Jarriault discloses all the claim limitations as set forth above.
Regarding claim 2, Jarriault discloses in order to form the sheet including the homogenized tobacco material, preferably the slurry formed according to step 102 is cast in a casting step 105. Preferably, this casting step 105 includes transporting the slurry to a casting station and casting the slurry into a sheet having a homogenous and uniform thickness on a support (Fig. 1, pg. 23, l. 5-9).
However, Jarriault does not explicitly disclose extruding the mixture to form a sheet of the aerosol generating material.
Mua teaches a method for making a smoking article, such as a cigarette, wherein the sheet is produced via papermaking process containing a cellulose containing material in step 1 wherein in step 4 tobacco solids from an extraction step 3 are added to the cellulose containing material of step 1, and optionally added tobacco solids I step 4 are refined in step 5. After refining in step 5, inert fillers and/or binders are mixed in step 6 with the refined material obtained in step 5 ([0016, 0017]). Mua additionally teaches other embodiments to practice the present invention; the block diagram in Fig. 2 shows the process steps to be taken to produce a tobacco substitute filler having an increased fill value where the sheet is produced via a band cast or extruding process (Fig.2, [0019]) wherein the mixture resulting from step 106 may be formed into a sheet by either an extruder in step 107 or by a bandcast process in step 108 ([0022]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Jarriault to process the slurry of Jarriault formed in step 102 by using an extrusion process as taught by Mua to form the sheet including homogenized tobacco material of Jarriault. One of ordinary skill in the art would have a reasonable expectation of success in using the extrusion process of Mua to form the sheet including homogenized tobacco material since applying a known technique to a known device (method or product) ready for improvement to yield predictable results is likely to be obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, D.).
Regarding claim 3, modified Jarriault discloses drying the sheet including the homogenized tobacco material containing alkaloids (Jarriault pg. 16, l. 27 – pg. 17, l. 1). This reads over the claim.
Regarding claim 15, modified Jarriault does not explicitly disclose shredding the sheet to form strips of the aerosol generating material.
Mua teaches in Fig. 2, step 109 the sheet material is shredded and added to strip blend for cigarette fabrication ([0022]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of modified Jarriault and shred the sheet of homogenized tobacco material to add to strip blend for cigarette fabrication as taught by Mua. This reads over the claim.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Jarriault et al. (WO 2019/129493, cited on May 5, 2023 IDS) in view of Mua (US 2006/0021626) as applied to claim 3 above, and further in view of Ibrahim (US 2018/0360099, cited on May 5, 2023 IDS).
Modified Jarriault discloses all the claim limitations as set for forth above. Modified Jarriault further discloses the drying step 106 comprising a uniform and gentle drying of the sheet where preferably, the drying profile is a so called TLC drying profile, but does not explicitly disclose a drying temperature of less than about 100o C (Jarriault pg. 23, l. 14-15, 21).
Ibrahim teaches tobacco compositions wherein the tobacco component contains paper reconstituted tobacco. The tobacco component may also contain leaf tobacco, extruded tobacco, and/or bandcast tobacco ([0028]). The tobacco composition may contain a filler ([0029]); an aerosol generating agent ([0030]). Ibrahim further teaches bandcast tobacco may be made from a slurry, the slurry comprising the components of the aerosol generating material and water. In some embodiments, the slurry is extruded or cast and then dried to form the aerosol generating material. In some embodiments, the method of making the slurry may comprise the steps of (1) mixing the aerosol generating agent and binder, (2) adding water and mixing, (3) adding filler and mixing, (4) adding tobacco extract and mixing to form a smooth slurry. The mixing after addition of tobacco extract will typically be a high shear mixing ([0082]). The slurry may be cast into a sheet on a casting plate or the band of a bandcasting machine. Then, the slurry may be dried using any suitable method of drying ([0084]). Ibrahim teaches slurry cast onto a stainless steel casting plate wherein drying can be effected in an oven at about 45-55o C for 0.5-5 hours (minimum time used to reduce loss of volatiles) ([0090]).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a drying temperature at about 45-55o C as taught by Ibrahim which is encompassed by the claimed temperature of less than about 100o C, since where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jarriault et al. (WO 2019/129493, cited on May 5, 2023 IDS) as applied to claim 1, in view of Deforel et al. (US 2021/0329964).
Jarriault discloses all the claim limitations as set forth above.
Regarding claim 8, Jarriault does not explicitly disclose the tobacco material particle size distribution (D90) of 160-450 µm.
Deforel teaches an aerosol-generating article is provided, including an aerosol-generating substrate including homogenised plant material formed of particulate plant material, the particulate plant material including between 10 percent and 40 percent by weight clove particles and between 60 percent and 90 percent by weight tobacco particles, based on dry weight of the particulate plant material, and the homogenised plant material further including an aerosol former and a binder (Abstract). Deforel teaches some processes such as casting and paper making are more suitable for producing homogenized plant material in sheet form wherein the casting process it based on casting a slurry comprising plant particles (for example clove particles or tobacco particles and clove particles in a mixture) and a binder (for example guar gum) onto a supportive surface, drying the slurry and removing the dried sheet from the supportive surface ([0012]). The tobacco material encompasses ground or powdered tobacco leaf lamina, ground or powdered tobacco leaf stems, tobacco dust, tobacco fines, and other particulate tobacco by-products formed during the treating, handling and shipping of tobacco ([0017]). The particulate clove material and the particulate tobacco material may both have D90 values of from greater than or equal to 20 microns to D90 values of less than or equal to 300 microns ([0019]).
Deforel additionally teaches in some embodiments, tobacco may be purposely ground for form particulate tobacco material having a defined particle size distribution, for use in homogenized plant material. This provides the advantage that the size of the tobacco particles can be controlled to provide a desired particle size distribution. The use of purposely ground tobacco therefore advantageously improves the homogeneity of the particulate tobacco material and the consistency of the homogenized tobacco material, enabling aerosol-generating article having a consistent delivery of aerosol to be provided ([0020]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to practice the invention of Jarriault to have a tobacco powder particle size distribution D90 value of from greater than or equal to 20 microns to D90 value of less than or equal to 300 microns as taught by Deforel since where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) and MPEP § 2144.05 (I). Making such modification to the tobacco powder of Jarriault advantageously improves the homogeneity of the particulate tobacco material (e.g., the tobacco powder) and the consistency of the homogenized tobacco material, enabling aerosol-generating article having a consistent delivery of aerosol to be provided as taught by Deforel.
Conclusion
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/RONNIE KIRBY JORDAN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747