DETAILED ACTION
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive.
Applicant argues “Neither Fursa nor Mironov provide any guidance as to the relative amount of aerosol former in a coating material in an arrangement comprising a homogenized tobacco material and a coating composition. In fact, Mironov includes only a single aerosol-former containing substrate: "the aerosol-forming substrate 24". This distinction is not merely a difference in location, but reflects incompatible operating principles. In Mironov, the gel is retained within interstices and is released only after melting, resulting in a gradual and sustained aerosol generation process. In contrast, Fursa's coating is positioned for immediate thermal coupling to the susceptor surface, promoting rapid heating and early-stage aerosol release. Adapting Mironov's bulk gel formulation to Fursa's coating would therefore defeat the intended operation of both systems. Mironov relies on retention of the aerosol-forming substrate”. The Examiner disagrees. As noted by Applicant, Fursa's coating is positioned for immediate thermal coupling to the susceptor surface. “The close contact leads to a fast heating up of the coating material” [0028]. There is no indication in Fursa that any specific composition or components are what leads to rapid heating. Rather, it is the positioning and close contact that leads to rapid heading. The coating material may basically be selected from any material suitable for the application in aerosol-generating devices [0029]. Furthermore, merely selecting known content levels for the nicotine and aerosol former already present in the coating of Fursa would not defeat the intended operation of Fursa.
Applicant argues “the cited references do not identify the relative amount of aerosol former in the coating as a parameter affecting performance in a multi-component system. Absent any recognition in the cited references that the relative proportion of aerosol former in the coating composition controls aerosol delivery timing or profile, there is no basis to conclude that the claimed threshold represents a predictable or result-effective variable subject to routine optimization. Rather, the claimed relationship defines a specific balance between a first aerosol source (the coating) and a second aerosol source (the bulk substrate), which is not addressed in the cited references.” The Examiner disagrees. The “claimed relationship” defines an extremely broad range of a content of aerosol former in the coating accounting for at least 0.1 percent by weight of an overall aerosol former content in the article. Given the effects of the aerosol former disclosed by Fursa [0058], one of ordinary skill in the art would have found it obvious to optimize its content in both the coating and substrate, and consequently its content in the coating relative to the overall content, as a matter of routine experimentation to achieve the desired effects.
Applicant argues “in the claimed aerosol-generating article, the nicotine and the aerosol former in the coating composition are more readily available than the nicotine and aerosol former contained within the "primary" substrate, and may be released more quickly to provide a first burst-like release of nicotine-containing aerosol while the temperature of the bulk of the substrate that surrounds the coated susceptor continues to be raised.” This effect of a faster heating of the coating and release of its components is taught by Fursa [0028].
Applicant argues “the Examiner appears to be of the view that the person of ordinary skill in the art would not consider the effect of the location on the composition of an aerosol-generating substrate when provided as a coating material. Even if this argument were accepted, it follows that the person of ordinary skill in the art would therefore not consider the relative amounts of aerosol former if an aerosol-generating substrate were provided in different locations, such as in a coating composition compared to as a sole, primary aerosol.” One of ordinary skill in the art would also recognize that the relative content of aerosol former in the coating is largely dependent on the relative content of the coating itself. As the coating is intended to achieve certain effects [0028], one of ordinary skill in the art would have found it optimize the content of the coating relative to the overall article, and consequently the aerosol former content in the coating relative to the overall article, to achieve the desired effects.
Applicant argues “The person of ordinary skill in the art, starting from Fursa, would not modify the composition of an aerosol-forming substrate coating 3 on Fursa's susceptor 11 in view of an aerosol-forming substrate 24 within the plurality of interstices of a susceptor material 20 because the person would understand that these arrangements would have completely different aims, heating profiles, and aerosolization parameters” The Examiner disagrees. Fursa teaches the coating is in the form of an aerosol former and nicotine-containing gel [0030]. Fursa is silent to the weight percentages of the components. One of ordinary skill in the art would have looked to the weight percentages of aerosol former and nicotine-containing gels known in the art, such as that of Mironov. The aerosol former and nicotine-containing gel of Fursa is heated to form an aerosol. The aerosol former and nicotine-containing gel of Mironov is heated to form an aerosol. One of ordinary skill in the art would have found the weight percentages of the gel of Mironov relevant and applicable to the gel coating of Fursa, regardless of any differences in the specific location or configuration of the gel.
Applicant argues “Although Fursa's 1 [0036] lists "nicotine" among optional additional components, the immediately following 1 [0037] clarifies that the coating material preferably comprises "tobacco or tobacco material," and the disclosure consistently describes the coating as a tobacco-containing slurry or material including tobacco particles. Accordingly, the reference to nicotine in $1 [0036] is embedded within a tobacco-based system and is not described as a separate, purified, or dosed component independent of tobacco material.” The Examiner disagrees. Fursa establishes in [0028] that the coating may comprise tobacco. In [0036], where Fursa discloses other components that may be included in the coating such as flavors, stimulants, and antioxidants, one of ordinary skill in the art would not interpret these to be simply components inherently present in tobacco. One of ordinary skill in the art would interpret the disclosure of nicotine to be isolated nicotine.
Applicant argues “In contrast, claim 15 recites that the nicotine or monoprotic nicotine salt is provided in a form that is distinct from tobacco particles. This is consistent with the description in the Specification at p. 8, 11. 19-21, which distinguishes such compounds from particulate plant material. The Examiner's interpretation effectively reads this distinction out of the claim and is inconsistent with the context and repeated teachings of Fursa” The Examiner’s interpretation does not read this distinction out of the claim. The Examiner acknowledges that claim 15 requires nicotine provided in a form that is distinct from tobacco particles. The Examiner simply maintains that Mironov also teaches nicotine provided in a form that is distinct from tobacco particles. The Examiner is not interpreting "isolated nicotine" and "monoprotic nicotine salt derived from tobacco" as referring to tobacco particles, or monoprotic nicotine salts when they are components present in a tobacco material.
Applicant argues “It is clear that Fursa, which relates to the application of a slurry containing tobacco particles onto a susceptor element, does not even teach or suggest a coating with a composition containing "isolated nicotine or a monoprotic nicotine salt derived from tobacco" at all, in contrast to what is recited in independent claim 15. That is, independent claim 15 recites the inclusion of nicotine in forms that contrast those described by Fursa.” The Examiner disagrees. “Aerosol-forming substrate as bulk or coating is a solid aerosol-forming substrate. The aerosol-forming substrate may comprise a tobacco-containing material containing volatile tobacco flavour compounds, which are released from the substrate upon heating. Alternatively, the aerosol-forming substrate may comprise a non-tobacco material.” [0047] “Preferably, the coating material comprises tobacco or tobacco material to add to a smoking experience when the coating material is heated.” [0037] A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Fursa is not limited to tobacco-based coatings and does teach or suggest isolated nicotine.
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 15-19, 21-23, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa (US 2019/0216133) in view of Mironov (US 2018/0352862).
Regarding claims 15, 21, 23, and 28, Fursa teaches an aerosol-generating article for producing an inhalable aerosol upon heating [0001], the aerosol-generating article comprising: an aerosol-generating element 2 comprising aerosol-generating substrate 22 [Fig. 3], wherein the aerosol-generating substrate comprises a homogenized tobacco material comprising aerosol former [0046-0047]; and a susceptor 11 arranged within the aerosol-generating element and configured to heat the homogenized tobacco material [0004, 0044], the susceptor being coated with a coating composition comprising aerosol former and nicotine (isolated nicotine) [0028, 0036, 0047, 0053]. Fursa is silent to a weight percentage of the components. However, Fursa does teach the coating may be in the form of an aerosol-forming gel [0030]. Mironov teaches an aerosol-generating article including an aerosol-forming gel [0004] comprising at least 70 percent by weight of glycerol (aerosol former) and 2 percent by weight nicotine (isolated nicotine) [0056]. As this is a conventional aerosol-forming gel composition known in the art, it would have been obvious to one of ordinary skill in the art to use these concentrations for the aerosol-forming gel coating of Fursa to achieve predictable results, i.e. forming an aerosol including nicotine and other components for delivery to the user.
Fursa is silent to an aerosol content in the coating relative to an overall aerosol former content. However, as Fursa teaches the aerosol former provides certain properties [0058], one of ordinary skill in the art would have found it obvious to optimize its content in both the coating and substrate, and consequently its content in the coating relative to the overall content, as a matter of routine experimentation to achieve the desired effects. One of ordinary skill in the art would also recognize that the content of aerosol former in the coating relative to the overall article is largely dependent on the content of the coating itself relative to the overall article. As the coating of Fursa is intended to achieve certain effects [0028], one of ordinary skill in the art would have found it optimize the content of the coating relative to the overall article, and consequently the aerosol former content in the coating relative to the overall article, to achieve the desired effects. The method of manufacturing the article thus reads on the claimed method.
Regarding claim 16, Fursa teaches the susceptor 11 is surrounded by the homogenized tobacco material 22 [Fig. 3].
Regarding claim 17, Fursa teaches the susceptor is an elongate susceptor and extends longitudinally within the aerosol-generating element [0016].
Regarding claim 18, Fursa teaches the homogenised tobacco material is provided as a gathered sheet of homogenised tobacco material [0046].
Regarding claim 19, Fursa does not teach a gelling agent. Mironov teaches a gelling agent that forms a solid medium [0037, 0051], which would have been obvious to one of ordinary skill in the art to include in Fursa to form a gel. The formation of the gel is interpreted to result in the aerosol former dispersed in the solid medium and the isolated nicotine dispersed in the aerosol former.
Regarding claim 22, Fursa teaches the coating composition forms a layer on an outer surface of the susceptor, the layer having a thickness of 100 micrometers [0081].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Fursa and Mironov as applied to claim 19 above, and further in view of Leah (US 2022/0408791)
Fursa teaches the aerosol former comprises glycerol [0059]. Modified Fursa does not teach the claimed gelling agent. Leah teaches an aerosol generating article comprising CMC or HPMC as a gelling agent [0111]. As it is prima facie obvious to substitute or combine art recognized equivalents known for the same purpose, it would have been obvious to one of ordinary skill in the art to include CMC or HPMC as a gelling agent in modified Fursa to achieve predictable results.
Claims 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Fursa and Mironov as applied to claim 15 above, and further in view of Oleg (US 2019/0124981).
Fursa teaches the article further comprises a support element and a mouthpiece element at a location downstream of the support element [0068-0069]. Fursa does not teach the support element is located immediately downstream of the aerosol-generating element, the support element being in longitudinal alignment with the aerosol-generating element and comprising a hollow tubular segment. Oleg teaches an aerosol-generating article comprising support element 30 located immediately downstream of the aerosol-generating element 20, the support element 30 being in longitudinal alignment with the aerosol-generating element 20 and comprising a hollow tubular segment [Fig. 1; 0082]. As this is a conventional support element arrangement known in the art, it would have been obvious to one of ordinary skill in the art to apply to the article of modified Fursa to achieve predictable results.
Claim 26 rejected under 35 U.S.C. 103 as being unpatentable over Fursa and Mironov as applied to claim 15 above, and further in view of Malgat (US 2019/0075845).
Modified Fursa does not teach the claimed upstream section. Malgat teaches an aerosol-generating article comprising an upstream section at a location upstream of the aerosol-generating element, the upstream section comprising an upstream element 90/91 positioned immediately upstream of the aerosol-generating element 20 [Fig. 1-2] and having a resistance to draw (RTD) of less than about 80 mm H2O [0015]. It would have been obvious to one of ordinary skill in the art to include this upstream element with the article of modified Fursa to prevent direct physical contact with a distal end of the elongate susceptor arranged longitudinally within the aerosol-forming substrate as suggested by Malgat [0004].
Claim 27 rejected under 35 U.S.C. 103 as being unpatentable over Fursa in view of Mironov and Batista (US 2017/0181472).
See the rejection of claims 15 and 28. Fursa in view of Mironov teaches all of the limitations of except for those directed to a protective layer. Batista teaches an aerosol-forming cartridge including a protective layer applied over an aerosol-forming substrate which is then removed to expose the substrate [0069]. It would have been obvious to one of ordinary skill in the art to apply a protective layer over the coating composition of modified Fursa, and remove the protective layer to expose the coating composition and provide an unprotected coated susceptor, to protect the coating composition prior to removal of the protective layer.
Claim 29 rejected under 35 U.S.C. 103 as being unpatentable over Fursa, Mironov, and Oleg as applied to claim 24 above, and further in view of Newns (US 2021/0378310).
Modified Fursa teaches the support element comprises a hollow cellulose acetate tube [Oleg 0058] but is silent to its radial hardness. Newns teaches an aerosol-forming article [0014] comprising a hollow cellulose acetate tube 4 located immediately downstream of the aerosol-generating element 2 [0180-0181; Fig. 1] and having an average radial hardness of 90 percent [0185]. One of ordinary skill in the art would have found it obvious to apply this known hardness to the hollow cellulose acetate tube support element of modified Fursa to yield predictable results, e.g. a suitably hard support element.
Conclusion
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/ERIC YAARY/Examiner, Art Unit 1755
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