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 Arguments
Applicant's arguments filed 3/3/2026 have been fully considered but they are not persuasive.
Applicant argues the clove material described in PHILIPt is treated in such a way to provide it in a form that cannot be said to have an average particle size that can be measured or assessed.
It is noted that Applicant’s inventive particles are made by cutting plant material and determining particle size by sieving (specification, p 7, lines 4-12). Cutting the plant material would not be expected to provide spherical particles and would be expected to result in similar difficulty determining their particle size as argued for the cut particles of PHILIP1. Applicant also admits that a common practice is to give the cut plant material a "mesh value", which reflects the ability of more than 95% of the particles of a given particle population to pass through a screen of a given mesh value, which may be used to measure the size of particles which do not have a regular spherical shape, making mean measurements challenging (specification, p 7, lines 22-29).
One of ordinary skill in the art would find that an approximation of particle sizes of PHILIP1 could be determined by sieving. Applicant has acknowledged that, for PHILIP1, “The process of treating the cloves includes conditioning, rolling, and cutting. The cloves are rolled to a thickness of 0.05 to 0.4 mm (i.e., similar to the thickness of lamina tobacco). The rolled cloves are then cut to a width of less than 1.2 mm, optionally to a width of 0.1 to 0.6 mm.” PHILIP1 also recites a cut width preferably between 0.2 and 0.5 mm (p 6, next to last full paragraph). The cut size of the particles includes dimensions that significantly overlay the claimed particle size and include dimensions would not allow the particles to pass through a mesh having holes of less than 0.25 mm. Absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to obtain cut clove particles having an average particle size (mesh value) of at least about 0.25 mm with a reasonable expectation of obtaining a suitable size for incorporation in tobacco cut filler.
Applicant’s discussion of the purported advantages of using plant particles of the claimed size were considered but not found to be of substantial evidentiary value as they are unsupported by objective factual evidence. The discussion amounts to the arguments of counsel and cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”).
Regarding Applicant’s argument that PHILIP 1 relates to homogenous distribution of cloves, which is a completely different purpose to the presently claimed invention, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.
The rejections over the prior art are maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8, 10-13, 18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over PHILIP MORRIS PRODUCTS SA (WO-2016/174013 A1), hereinafter PHILIP1.
Claims 1-3: PHILIP1 discloses treating cloves for use in tobacco cut filler, the method comprising conditioning the cloves to the desired moisture content, rolling the conditioned cloves, cutting the rolled cloves and blending the treated cloves with tobacco material to produce tobacco cut filler (Abs., p 1, last paragraph bridging to p 2, first full paragraph). The cloves are rolled to a thickness of between 0.05 mm and 0.4 mm (p 3, last paragraph) and cut to a cut width of between 0.2 mm and 0.5 mm (p 6, second full paragraph from bottom).
The cut size of the particles includes dimensions that significantly overlay the claimed particle size and include dimensions would not allow the particles to pass through a mesh having holes of less than 0.25 mm. Absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to obtain cut clove particles having an average particle size (mesh value) of at least about 0.25 mm from the rolling and cutting steps with a reasonable expectation of obtaining a suitable size for incorporation in tobacco cut filler.
PHILIP1 does not disclose a binder or other means to immobilize the cut rolled clove material within the aerosol generating material, but only discloses blending cloves treated in accordance with the inventive method with tobacco material to produce tobacco cut filler (p 2, first full paragraph). Therefore, producing an aerosol generating material wherein the cut plant material (cut rolled clove material) is not immobilized within the aerosol generating material would have been an obvious embodiment.
Tobacco compositions comprising the inventive rolled cloves can be used to provide to provide the tobacco aerosol forming substrate in a smoking article wherein the substrate is heated rather than burned (p 7, last paragraph bridging to p 8). The rolled cloves are dried to a moisture content between 10 percent oven volatiles and 18 percent oven volatiles (p 6, last full paragraph to p 7, line 2), therefore are solid. The cut tobacco comprises cut rolled leaves (p 7, 4th full paragraph), which are also solid.
Therefore, a solid aerosol generating material comprising the blended cut tobacco material and cut plant (clove) material would have been obvious to one of ordinary skill in the art from the disclosure of PHILIP1.
Claim 4: PHILIP1 discloses that the tobacco is reconstituted tobacco in some embodiments (p 7, 4th full paragraph).
Claim 5: PHILIP1 discloses that the tobacco cut filler preferably comprises at least 5 percent by weight of cut rolled cloves (p 7, 3rd full paragraph), which subsumes the claimed range. PHILIP1 further discloses that the tobacco cut filler comprises at least 60 percent by weight of cut tobacco lamina. Therefore, absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to form an aerosol generating material comprising cut tobacco material and a claimed weight percentage of cut plant (clove) material, with a reasonable expectation of success in obtaining a suitable aerosol generating material.
Claim 6: PHILIP1 does not disclose the density of the aerosol generating material. PHILIP1 does teach that the “filling power’ is the volume of space taken up by a given weight or mass of material in a smoking article (p 3, first paragraph). The filling power is the inverse of a density. The greater the filling power of a material, such as tobacco cut filler or clove material, the lower the weight of material required to fill a tobacco rod of predefined dimensions. The filling power and therefore the density is revealed to be a result effective variable that can be determined by one of ordinary skill in the art by routine optimization.
Claim 7: PHILIP1 discloses that the cut tobacco has a mean cut width between 0.8 mm and 1.1 mm, corresponding to about 9.1 to 10.8 cuts per cm. (p 7, second to last full paragraph), which overlays the claimed range. Absent convincing evidence of unexpected results commensurate in scope with the claims, it would have been obvious to one of ordinary skill in the art to cut the cut tobacco material with a claimed number of cuts per inch or cm.
Claim 8: PHILIP1 discloses that the cut rolled cloves are dried to between about 10 percent oven volatiles and about 18 percent oven volatiles (p 6, last full paragraph). The disclosed percent is considered to overlap or touch the claimed range of from about 8 to about 9% or, at least, one of ordinary skill in the art would have found no significant difference between the claimed upper limit about 9% and the lower limit of about 10% disclosed by PHILIP1.
Claim 10: In an embodiment, PHILIP1 discloses that the cut rolled clove material and the tobacco material are processed distinctly and subsequently blended (p 7, second full paragraph). Also, as discussed above, the cut rolled clove material is not immobilized within the aerosol generating material and, therefore, remains independent of and mixed with the tobacco material rather than incorporated into the tobacco material, for example by adsorption or absorption.
Claim 11: PHILIP1 does not disclose a binder.
Claim 12: PHILIP1 discloses that tobacco compositions comprising the inventive rolled cloves can be used to provide to provide the tobacco aerosol forming substrate in a smoking article wherein the substrate is heated rather than burned (p 7, last paragraph bridging to p 8). Therefore, a non-combustible aerosol provision system comprising the disclosed aerosol generating material would have been obvious to one of ordinary skill in the art from the disclosure of PHILIP1.
Claim 13: PHILIP1 discloses that, in a non-combustible aerosol provision system comprising the disclosed aerosol generating material, the aerosol generating material is heated and volatile compounds are released from an aerosol forming substrate comprising the aerosol generating material by heat transfer from a heat source and entrained in air drawn through the smoking article (p 7, last paragraph bridging to p 8).
Claim 18: PHILIP1 discloses that tobacco compositions comprising the inventive rolled cloves can be used to provide the tobacco aerosol forming substrate in a smoking article (reads on a consumable) wherein the substrate is heated rather than burned (p 7, last paragraph bridging to p 8).
Claim 20: PHILIP1 discusses the filling power of a material, such as tobacco cut filler or clove material in terms of the weight of material required to fill a tobacco rod of predefined dimensions. Therefore, PHILIP1 clearly envisions a consumable in the form of a rod comprising the aerosol generating material or, at least a rod comprising the solid aerosol generating material would have been obvious.
Claim 21: PHILIP1 discloses a method of preparing the aerosol generating material comprising combining cut tobacco material and the cut rolled clove material (p 7, second full paragraph).
Claim 22: PHILIP1 discloses blending cut rolled clove material produced in accordance with the inventive method with the cut tobacco material to produce tobacco cut filler (p 2, first full paragraph).
Claims 14-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over PHILIP1 in view of PHILIP MORRIS PRODUCTS SA (US2015/0027475), hereinafter PHILIP2 and as evidenced by Worm et al (US 2013/0037041)
Claim 14: the disclosure of PHILIP1 is used as above. PHILIP1 does not disclose a system or hybrid system comprising an aerosol generating material that is heated to volatize constituents and a liquid that is heated to form a vapor, and optionally a filter or filter segment. However, PHILIP2 discloses an aerosol generating article (consumable) in the form of a rod that generates an inhalable aerosol when an aerosol-forming substrate is heated. The rod includes an aerosol-forming substrate and a mouthpiece filter locate downstream of the aerosol-forming substrate (Abs, [0008]-[0009]). The aerosol-forming substrate may comprise a tobacco-containing material containing volatile tobacco flavor compounds, which are released from the substrate upon heating. The aerosol-forming substrate may further comprise an aerosol former, such as. glycerine and propylene glycol [0018], which are liquids that can form a visible vapor reminiscent of smoke (for evidence, see Worm et al, [0060]). The solid aerosol generating material is provided in a cartridge in some embodiments ([0019].
Absent convincing evidence of unexpected results, it would have been obvious to one of ordinary skill in the art to include the aerosol generating material in a cartridge as disclosed by PHILIP2 and also to include a liquid aerosol forming or vapor forming liquid that is heated to form a vapor that can be reminiscent of smoke and provide a visual effect for further enjoyment of the user. Including a mouthpiece filter that includes flavorants, such as menthol as a conventional component in consumable articles ([0003], [0005]).
Claim 15: One of ordinary skill in the art would have realized that the vapor formed upon heating would permeate the cut filler material not yet fully heated and provide at least some heating thereto.
Claim 16: the glycerine and propylene glycol aerosol forming or vapor forming liquids are nicotine free liquids,
Claim 19: As discussed above, it would have been obvious to one of ordinary skill in the art to include the aerosol generating material in a cartridge.
Allowable Subject Matter
Claim 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to disclose or reasonably suggest a system configured as claimed.
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 DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS R CORDRAY/Primary Examiner, Art Unit 1748