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 1-4, 6-8, and 10-22 are pending and are subject to this Office Action.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/11/2026 has been entered.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 05/19/2026.
Claim 1 is amended.
Claims 5 and 9 are cancelled.
Response to Arguments
Applicant' s arguments, see pages 5-9, filed 05/19/2026, with respect to the rejection(s) of claims 1-22 under 35 U.S.C. 103, have been fully considered and are not persuasive as detailed in the advisory action dated 06/01/2026. However, to advance prosecution an additional reference that teaches the newly added claim amendments has been provided below.
Additionally, after further consideration and in view of newly found prior art, claim 17 is no longer indicated as having allowable subject matter.
The following is a modified rejection based on amendments made to the claims.
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.
Claims 1-4, 6-8, 10-13 and 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over Santos (WO-2016174013-A1), and further in view of Deforel (US-20210329964-A1).
In regards to claim 1, Santoso directed to a clove-containing flavorant material, discloses a solid aerosol generating material comprising cut tobacco material ([0010]-[0012]) and anywhere from 5% to 30% by weight of cloves (i.e., cut plant material) (the composition comprises at least 60% by weight of tobacco and at least 5% cloves, leaving the remaining composition being up to 30% by weight cloves as discussed in the advisory action dated 06/01/2026) ([0048]-[0050]). The range disclosed overlaps the claimed range of cut plant material being from 25% to about 40% by weight of cut plant material based upon the weight of the aerosol generating material.
Santoso further discloses the cut plant material (cloves) are rolled to a thickness of between 0.05 mm and 0.4 mm ([0009]) and cut to a cut width of between 0.2 mm and 0.5 mm ([0043]). The cut size of the particles includes dimensions that significantly overlap 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.
Santos does not explicitly disclose the plant material is “not immobilized within the solid aerosol generating material”, however, Santoso teaches the aerosol generating material preferably comprises no binder ([0014]) and therefore does not disclose a binder or other means to immobilize the cut rolled clove material within the aerosol generating material. Therefore, in the absence of a binder, it would be obvious to one of ordinary skill in the art that the product would not be completely immobile and further obvious to produce 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.
While Santoso is considered to make obvious the claimed range of the cut plant material comprising about 25% to about 40 % by weight of the aerosol generating material and the cut plant material having an average particle size of at least about 0.25 mm, an additional reference that teaches cloves (cut plant material) comprising overlapping ranges has been provided.
Additionally, Deforel directed to a clove containing aerosol-generating substrate, discloses a solid homogenized plant material (i.e., aerosol-generating material) comprising cut plant tobacco material ([0029]; [0053]-[0054]) and more preferably between 30 percent and 40 percent by weight clove particles ([0008]), which overlaps the claimed range of cut plant material being about 25% to about 40% by weight of the aerosol generating material, and is therefore considered prima facie obvious.
Deforel further discloses the particle sizes diameter of the cut plant material is on average preferably less than or equal to 400 microns (0.4 mm) ([0018]-[0020]). The range disclosed by the prior art overlaps the claimed range of the average particle size being at least about 0.25 mm and is therefore considered prima facie obvious.
Deforel further discloses the particle size range of the clove particles enables clove particles to be combined with tobacco particles in existing cast leaf processes ([0019]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Santoso by making the clove cut plant material have known particle sizes and weight percents, as taught by Deforel, because both are directed to aerosol generating compositions comprising tobacco and clove, Deforel teaches a desirable particle size and a known weight percent of clove in the art ([0018]-[0020]), and this merely involves applying a known amount and particle size of the same plant material of a similar composition to yield predictable results.
In regards to claim 2, Santoso discloses a particle size that would clearly be greater than 0.25 mm as discussed above and therefore makes obvious the claimed range of the average particle size being from 0.3 to 0.5 mm.
Modified Santoso discloses the particle sizes diameter of the cut plant material is on average preferably less than or equal to 400 microns (0.4 mm) ([0018]-[0020]). The range disclosed by the prior art overlaps the claimed range of the average particle size being from 0.3 to 0.5 mm and is therefore considered prima facie obvious.
In regards to claim 3, Santoso discloses the cut plant material comprises clove ([0006]-[0016]).
In regards to claim 4, Santoso discloses the tobacco material can include reconstituted tobacco ([0049]).
In regards to claim 6, Santos discloses it is desirable to treat cloves such that they have a uniform density and high filling power to be more effectively used in cut filler product ([0008]), but does not explicitly disclose the density of the aerosol generating material is from about 0.25 to about 0.45 g/cm^3.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the density of 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 density is critical and has unexpected results. In the present invention, one would have been motivated to optimize the density motivated by the desire to treat the cloves to be more effectively used with the tobacco product and have high filling powder.
Furthermore, since the compositions are directed to the same components, overlapping weight percents, and overlapping particle sizes, it would be obvious to one of ordinary skill in the art that the densities would also overlap and therefore the claimed density is considered prima facie obvious.
In regards to claim 7, Santos discloses 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 (equivalent to 23.114 to 27.432 CPI) ([0043]), which overlaps the claimed range of the tobacco material has a cut size from 20 to 25 CPI, and is therefore considered prima facie obvious.
In regards to claim 8, Santos discloses a moisture content of the cloves is as little as 10% but is silent to a water content of the aerosol generating material and does not explicitly disclose a water content of from about 8 to about 9%.
Deforel discloses the moisture content of the mixture of clove and tobacco is preferably 5 to 15 percent based no the total weight ([0105]-[0106]).
Therefore, before the effective filing date of the claimed invention, it would be obvious to modify Santos by further drying the cloves after mixing the tobacco, as taught by Deforel, because one of ordinary skill in the art would look to a similar reference for a known moisture content in the art of a similar aerosol-generating material, especially when the original prior art is silent to one, and this merely involves applying a known moisture content of a similar composition to yield predictable results.
In regards to claim 10, Santos discloses an embodiment wherein the cut rolled clove material and the tobacco material are processed distinctly and subsequently blended ([0047]). Furthermore, 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.
In regards to claim 11, Santos discloses it is preferable to not include a binder in the aerosol generating material ([0014]).
In regards to claim 12, Santos discloses the aerosol generating material can be used with non-combustion type aerosol provision systems ([0051]).
In regards to claim 13, Santos discloses the aerosol generating material can be heated (i.e., heating system to volatilize constituents) ([0051]).
In regards to claims 18 and 20, Santos discloses the aerosol generating material can be used in the tobacco rod of a combustible smoking product (i.e., consumable) ([0051]).
In regards to claim 19, Santos does not explicitly disclose the consumable further comprising a cartridge or pod comprising the solid aerosol generating material, however since Santos does disclose the tobacco composition can be used in known non-combustible type devices, which are known in the art to comprise cartridges/pods for containing the smokable material, it would be obvious to one of ordinary skill in the art that the aerosol generating material would be incorporable into a pod/cartridge and is therefore considered a prima facie obvious limitation.
In regards to claims 21-22, Santos discloses the cloves/cut plant material can be blended/combined with the cut tobacco material ([0010]).
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Santos (WO-2016174013-A1) further in view of Deforel (US-20210329964-A1), as applied to claim 12 above, and further in view of Reevell (US-20180168228-A1).
In regards to claim 14, Modified Santos is directed to the aerosol generating material and is silent to the types of systems that incorporate the aerosol generating material, and therefore does not explicitly disclose the system as a hybrid system for heating both an aerosol generating material and a liquid which is heated to form a vapor.
Reevell, directed to an aerosol-generating system, discloses a hybrid system comprising both a liquid and a solid aerosol-forming substrate (abstract).
Reevell further discloses the hybrid system allows the liquid aerosol forming substrate to be replaceable ([0038]).
Reevell further discloses the solid aerosol-forming substrate may comprise a tobacco containing material and a non-tobacco containing material and releases compounds during heating ([0065]-[0068]).
Reevell further discloses the liquid portion is drawn through the solid substrate portion during use to gain additional volatile compounds during use ([0076]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to incorporate the aerosol generating material of Modified Santos into the system of Reevell by applying the material to be used in a hybrid device comprising both a liquid and solid aerosol generating substrate, as taught by Reevell, because all are directed to aerosol generating materials, Reevell teaches the additional liquid portion in the system allows the liquid part to be replaceable ([0038]) and releases additional compounds during heating ([0076]), and this merely involves applying a known technique of applying a similar solid aerosol generating material in a known hybrid system to yield predictable results.
In regards to claim 15, Modified Santos discloses the liquid is heated and further releases compounds in the solid aerosol generating material as it passes through (i.e., solid aerosol generating material is heated by the vapor) (Reevell [0076]).
In regards to claim 16, Modified Santos discloses the liquid can be nicotine-free (Reevell [0074]; [0076]).
In regards to claim 17, Modified Santos discloses the hybrid system only comprises one heater section comprising an electric heater 64 for heating the liquid portion of the system (i.e., does not include separate means for heating the solid aerosol-generating device) (Reevell [0107]-[0108]).
Conclusion
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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