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 .
Information Disclosure Statement
The foreign references identified in the Information Disclosure Statements filed on 08/11/2023 and 04/30/2025 were searched for corresponding US Patents, Publications, or other English equivalents. Please see below:
WO 2019178448 = US 20190045834;
CN 112566519 = US 20190045834;
WO 2020183175 = US 20220167659;
WO 2018215479 = US 20210153541;
KR 20200010295 = US 20210153541;
WO 2015025158 = US 20160205992; and
KR 101851091 = EP 3097794.
Of the above, US 20190045834, US 20220167659, US 20210153541, US 20160205992, and EP 3097794 are being cited in the attached PTO-892 because they are not already of record.
Examiner’s Note
Claim 2’s recitation of “wherein the tobacco medium is included in a non-combustible aerosol-generating article” is being interpreted as an intended use/functional limitation limiting the structure of claim 1 to a size capable of being included in a non-combustible aerosol-generating article. This interpretation is consistent with the plain meaning of claim 2 and moots objecting to dependent claim 2 and independent claim 8 for claiming duplicate subject matter. Applicant is advised that when two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Objections
Claim 7 is objected to because of the following informalities:
Claim 7 recites “the tobacco material” in line 2. Examiner submits claim 7 would be more consistent with claim 1, if the limitation above was amended to recite “the pulverized tobacco material.”
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 3 and 7 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.
As to claim 3, one of ordinary skill in the art is unable to ascertain what additional structure claim 3’s recitation “the aerosol-generating article has a heating temperature of 30 °C to 180 °C” is imputed to the tobacco medium. As explained in the Examiner’s Note above, claim 2’s recitation of “wherein the tobacco medium is included in a non-combustible aerosol-generating article” is being interpreted as an intended use/functional limitation limiting the structure of claim 1 to a size capable of being included in a non-combustible aerosol-generating article. How does claim 3’s “the aerosol-generating article has a heating temperature of 30 °C to 180 °C” further narrow the scope of claim 2?
As to claim 7, the recitation of “the coating layer” lacks antecedent basis.
As to claim 7, the recitation of “to increase an amount of nicotine transfer from the tobacco material” does not provide an adequate comparison for one of ordinary skill in the art to ascertain when a coating layer has pores which “increase” an amount of nicotine transferred from the tobacco material.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1–4 is/are rejected under 35 U.S.C. 103 as being unpatentable over AJITHKUMAR US 20200054064 (“AJITHKUMAR”) in view of ARNDT US 20220218016 (“ARNDT”).
As to claim 1, AJITHKUMAR discloses a tobacco medium comprising:
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a pulverized tobacco material (Table 1’s Samples 3–6’s “Tobacco powder”; [0074–76]); and
a pH adjuster (Table 1’s Samples 3–6’s “Basic PH modifier” [0065]),
wherein the tobacco medium includes at least 70 wt% of the pulverized tobacco material on a dry weight basis (Table 1’s Samples 3–6’s “Tobacco powder” have a dry weight basis between 72.83–74.08);
a PH of the tobacco medium is in a range of 6 to 9 (see above).
While AJITHKUMAR discloses that the tobacco medium may have a total nicotine content between 4–8 mg ([0062]), AJITHKUMAR fails to explicitly disclose the total weight of the final tobacco medium in Tables 1–2—preventing one of ordinary skill in the art from ascertain thing dry weight basis of nicotine in the pulverized tobacco material and the tobacco medium. Accordingly, AJITHKUMAR fails to explicitly disclose:
1) the pulverized tobacco material includes at least 4 wt% of nicotine on a dry weight basis, and
2) the tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis.
ARDNT teaches a pulverized tobacco material includes at least 4 wt% of nicotine on a dry weight basis ([0099]’s “The tobacco particles may have a nicotine content of at least about 2.5 percent by weight, based on dry weight. More preferably, the tobacco particles may have a nicotine content of at least about 3 percent, even more preferably at least about 3.2 percent, even more preferably at least about 3.5 percent, most preferably at least about 4 percent by weight, based on dry weight.”).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the specific teachings of ARDNT into the generic disclosure of AJITHKUMAR’s tobacco material for the benefit of aerosol-generating substrate could provide an aerosol with a sensorial experience that is comparable to that provided by a conventional combustible cigarette (as taught by ARDNT at [0007]). See MPEP § 2144.05 (I) (explaining “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”) and id. (citing one decision which “found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range.”).(annotation added)
The above makes obvious 1) the pulverized tobacco material includes at least 4 wt% of nicotine on a dry weight basis.
The obvious combination of ARDNT’s 4% of nicotine into samples 3–6 in Table 1 of AJITHKUMAR also arrives at 2) the tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis. Please see below:
AJITHKUMAR
Table 1 Samples
Dry wt% of Tobacco Powder from
AJITHKUMAR’s Table 1
Dry wt% of Nicotine in Tobacco Powder from ARDNT
Dry wt% of Nicotine in overall Tobacco Medium or
(Column 2) x (Column 3) =
Tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis?
Sample 3
74.08
4%
2.963
Yes
Sample 4
73.15
4%
2.926
Yes
Sample 5
73.55
4%
2.942
Yes
Sample 6
72.83
4%
2.913
Yes
As demonstrated above, the obvious combination of ARDNT’s tobacco powder with 4% of nicotine into samples 3–6 in Table 1 of AJITHKUMAR arrives at the tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis.
Accordingly, AJITHKUMAR and ARDNT make obvious claim 1.
As to claim 2, AJITHKUMAR and ARDNT make obvious the tobacco medium according to claim 1.
The obvious combination above is capable of being included in a non-combustible aerosol-generating article ([0187–188]). Accordingly, AJITHKUMAR and ARDNT make obvious the limitations of claim 2.
As to claim 3, AJITHKUMAR and ARDNT make obvious the tobacco medium according to claim 2.
The obvious combination above is capable of being included in a non-combustible aerosol-generating article that has a heating temperature of 30 °C to 180 °C. Accordingly, AJITHKUMAR and ARDNT make obvious the limitations of claim 3.
As to claim 4, AJITHKUMAR and ARDNT make obvious the tobacco medium according to claim 1.
AJITHKUMAR further discloses wherein the tobacco medium is manufactured in a form of reconstituted tobacco leaves ([0200]).
Claim(s) 5–7 is/are rejected under 35 U.S.C. 103 as being unpatentable over AJITHKUMAR US 20200054064 (“AJITHKUMAR”) in view of ARNDT US 20220218016 (“ARNDT”), as applied in the rejection of claim 1 above, and in further view of, CHEN CN 112438424 (“CHEN”) (with reference made to the attached machine translation).
As to claim 5, AJITHKUMAR and ARDNT make obvious the tobacco medium according to claim 4.
AJITHKUMAR and ARDNT fail to disclose wherein the form of granules is a structure including a core and a shell surrounding the core.
CHEN teaches wherein the form of granules is a structure including a core and a shell surrounding the core (Abstract, bottom of page 2, claim 3, also note that the fourth full paragraph on page 4 explains that this feature can be used with both combustion cigarettes and cigarettes intended to be heated “without combustion” without impacting the taste).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of CHEN into the disclosure of modified AJITHKUMAR for the benefit of improved moisture consistency and limiting volatile components within the tobacco granule from leaking out of the granule core (as taught by CHEN at bottom of page 3 and extending onto page 4).
As to claim 6, AJITHKUMAR and ARDNT make obvious the tobacco medium according to claim 4.
AJITHKUMAR and ARDNT fail to disclose wherein the tobacco medium further includes a coating layer on an outside of the reconstituted tobacco leaves or granules.
CHEN teaches wherein the tobacco medium (Fig. 1, 1, page 5) further includes a coating layer on an outside of the reconstituted tobacco leaves or granules (Fig. 1, coating layers 2 and 3; page 5; also note that the fourth full paragraph on page 4 explains that this feature can be used with both combustion cigarettes and cigarettes intended to be heated “without combustion” without impacting the taste).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of CHEN into the disclosure of modified AJITHKUMAR for the benefit of improved moisture consistency and limiting volatile components within the tobacco granule from leaking out of the granule core (as taught by CHEN at bottom of page 3 and extending onto page 4).
As to claim 7, AJITHKUMAR and ARDNT make obvious the tobacco medium according to claim 4.
AJITHKUMAR and ARDNT fail to disclose wherein the coating layer has pores to increase an amount of nicotine transfer from the tobacco material.
CHEN teaches wherein the tobacco medium (Fig. 1, 1, page 5) further includes a coating layer on an outside of the reconstituted tobacco leaves or granules which has pores to increase an amount of nicotine transfer from the tobacco material (Fig. 1, coating layers 2 and 3; page 5; also note that the fourth full paragraph on page 4 explains that this feature can be used with both combustion cigarettes and cigarettes intended to be heated “without combustion” without impacting the taste).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the teachings of CHEN into the disclosure of modified AJITHKUMAR for the benefit of improved moisture consistency and limiting volatile components within the tobacco granule from leaking out of the granule core (as taught by CHEN at bottom of page 3 and extending onto page 4).
Claim(s) 8–10 is/are rejected under 35 U.S.C. 103 as being unpatentable over AJITHKUMAR US 20200054064 (“AJITHKUMAR”) in view of ARNDT US 20220218016 (“ARNDT”).
As to claim 8, AJITHKUMAR discloses an aerosol-generating article (claim 14 and [0196]) comprising:
a tobacco medium (Table 1 reproduced below),
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a pulverized tobacco material (Table 1’s Samples 3–6’s “Tobacco powder”; [0074–76]); and
a pH adjuster (Table 1’s Samples 3–6’s “Basic PH modifier” [0065]),
wherein the tobacco medium includes at least 70 wt% of the pulverized tobacco material on a dry weight basis (Table 1’s Samples 3–6’s “Tobacco powder” have a dry weight basis between 72.83–74.08);
a PH of the tobacco medium is in a range of 6 to 9 (see above).
While AJITHKUMAR discloses that the tobacco medium may have a total nicotine content between 4–8 mg ([0062]), AJITHKUMAR fails to explicitly disclose the total weight of the final tobacco medium in Tables 1–2—preventing one of ordinary skill in the art from ascertain thing dry weight basis of nicotine in the pulverized tobacco material and the tobacco medium. Accordingly, AJITHKUMAR fails to explicitly disclose:
1) the pulverized tobacco material includes at least 4 wt% of nicotine on a dry weight basis, and
2) the tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis.
ARDNT teaches a pulverized tobacco material includes at least 4 wt% of nicotine on a dry weight basis ([0099]’s “The tobacco particles may have a nicotine content of at least about 2.5 percent by weight, based on dry weight. More preferably, the tobacco particles may have a nicotine content of at least about 3 percent, even more preferably at least about 3.2 percent, even more preferably at least about 3.5 percent, most preferably at least about 4 percent by weight, based on dry weight.”).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to incorporate the specific teachings of ARDNT into the generic disclosure of AJITHKUMAR’s tobacco material for the benefit of aerosol-generating substrate could provide an aerosol with a sensorial experience that is comparable to that provided by a conventional combustible cigarette (as taught by ARDNT at [0007]). See MPEP § 2144.05 (I) (explaining “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”) and id. (citing one decision which “found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range.”) (annotation added)
The above makes obvious 1) the pulverized tobacco material includes at least 4 wt% of nicotine on a dry weight basis.
The obvious combination of ARDNT’s 4% of nicotine into samples 3–6 in Table 1 of AJITHKUMAR also arrives at 2) the tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis. Please see below:
AJITHKUMAR
Table 1 Samples
Dry wt% of Tobacco Powder from
AJITHKUMAR’s Table 1
Dry wt% of Nicotine in Tobacco Powder from ARDNT
Dry wt% of Nicotine in overall Tobacco Medium or
(Column 2) x (Column 3) =
Tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis?
Sample 3
74.08
4%
2.963
Yes
Sample 4
73.15
4%
2.926
Yes
Sample 5
73.55
4%
2.942
Yes
Sample 6
72.83
4%
2.913
Yes
As demonstrated above, the obvious combination of ARDNT’s tobacco powder with 4% of nicotine into samples 3–6 in Table 1 of AJITHKUMAR arrives at the tobacco medium includes at least 2.8 wt% of nicotine on a dry weight basis.
Accordingly, AJITHKUMAR and ARDNT make obvious claim 8.
As to claim 9, AJITHKUMAR and ARDNT make obvious the aerosol-generating article according to claim 8.
AJITHKUMAR further discloses wherein the aerosol-generating article generates an aerosol without combustion when heated at a heating temperature ([0007] and [0205–206]).
Additionally, Modified AJITHKUMAR, by making obvious the aerosol-generating article claimed, is considered to arrive at wherein the aerosol-generating article generates an aerosol without combustion when heated at a heating temperature See MPEP § 2112.01(I) (explaining when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent).
As to claim 10, AJITHKUMAR and ARDNT make obvious the aerosol-generating article according to claim 9.
Modified AJITHKUMAR, by making obvious the aerosol-generating article claimed, is considered to arrive at wherein the heating temperature is in a range of 30 °C to 180 °C. See MPEP § 2112.01(I) (explaining when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
KR-2021012822 generally discloses coating tobacco granules with layers, which is relevant to claim 4–7.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANLEY L CUMMINS IV whose telephone number is (571)272-1060. The examiner can normally be reached Monday-Friday 9:30 a.m. - 6:00 p.m. (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H. Wilson can be reached at (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MANLEY L CUMMINS IV/ Primary Examiner, Art Unit 1747