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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 3/10/2026 is acknowledged.
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/10/2026.
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 2 and 10 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.
Regarding claim 2, the claim limitation “the flavoring sheet is used as the wrapper” is indefinite because it contradicts claim 1. Specifically, claim 1 requires that the wrapper and the flavoring sheet be separate elements (i.e., “flavoring sheet…applied to the wrapper”) while claim 2 appears to requires the flavoring sheet and the wrapper to be the same element (i.e., “flavoring sheet is used as the wrapper”). For examination proposes, the limitation will be interpreted as “wherein the flavoring sheet wraps the at least the portion of the smoking material portion.”
Regarding claim 10, the claim limitation “a characteristic of not gelating when cooled” is indefinite because the term “cooled” is a relative term that needs to be understood in the context of another temperature that is neither defined by the claims nor described in the instant specification. For examination purposes, the limitation will be considered met by an LM-pectin having less than 50% carboxyl groups. See MPEP 2112.01(II).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaljura et al. (WO 2020/025719).
Regarding claim 1, Kaljura discloses an aerosol generating article (101; Fig. 2-3; “smoking article”) comprising:
a body of aerosol generating material (103; “smoking material portion”);
a filter assembly (105; “filter portion”); and
a laminate material/structure (Fig. 1; p. 4, ll. 1-6) comprising a carrier layer (6; “wrapper”), wherein the laminate material may be included as a rolled sheet such that the sheet circumscribes the rod of aerosolizable material (p. 16, ll. 3-7, p. 32, ll. 4-6 and 26-28); “wrapping at least a portion of the smoking material portion”), wherein an amorphous solid layer (4; “flavoring sheet”) including a gelling agent comprising a hydrocolloid (p. 8, ll.4-14; “hydrocolloid material”) and a flavor (p. 9, ll. 20-22; “flavoring”) which is formed on the carrier layer (p. 4, ll. 1-6; “applied to the wrapper”).
Regarding claim 2, Kaljura discloses wherein the amorphous solid sheet circumscribes the rod of aerosolizable material (p. 12, ll. 1-4; “wherein the flavoring sheet wraps the at least the portion of the smoking material portion” as interpreted according to 112(b) above).
Regarding claim 3, Kaljura discloses the amorphous solid may have a thickness of about 50 µm to about 100 µm, or about 60 µm to about 90 µm, suitably around 77 µm (p. 32, ll. 29-31).
Regarding claim 4, Kaljura discloses the amorphous solid layer is attached to a top side of the carrier sheet (see Fig. 1; “attached to an inner side of the wrapper”).
Regarding claim 5, Kaljura discloses the amorphous solid is attached to the carrier layer (p. 4, ll. 1-6), which means that the two layers are directly in contact and attached to one another and excludes the presence of an intermediate layer (p. 4, ll. 14-17; “attached…without an adhesive”).
Regarding claim 6, Kaljura discloses the carrier may be made from metal foil (p. 5, ll. 22-24), and the flavoring sheet is attached to a top side of the carrier sheet (see Fig. 1; “attached to an inner side of the metal foil”).
Regarding claim 7, Kaljura discloses applying, by spraying casting, or extruding, a slurry comprising the components of the amorphous solid before setting and drying to form the amorphous solid (p. 27, ll. 29-31; “coated”) to the top side of the carrier (see Fig. 1).
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura et al. as applied to claim 7 above.
Regarding claim 8, Kaljura discloses the smoking article as discussed above with respect to claim 7, wherein the amorphous solid precursor is applied to the top surface of the carrier (p. 27, ll. 29-31; Fig. 1), and wherein the amorphous solid may have a thickness of about 50 µm to about 100 µm, or about 60 µm to about 90 µm, suitably around 77 µm (p. 32, ll. 29-31; “coating thickness” that overlaps the claimed range of “less than or equal to 70 µm”). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura et al. as applied to claim 1 above, and further in view of Ergle et al. (US 2009/0038629).
Regarding claim 9, Kaljura discloses the smoking article as discussed above with respect to claim 1, wherein the amorphous solid may comprise a gelling agent comprising a hydrocolloid such as celluloses (and derivatives) (p. 8, ll. 4-24).
However, Kaljura does not explicitly teach the hydrocolloid material includes methylcellulose. Specifically, while Kaljura discloses the genus of cellulose and cellulose derivatives and gives examples (hydroxyethyl cellulose, hydroxypropyl cellulose, carboxymethylcellulose), Kaljura does not explicitly disclose methylcellulose.
Ergle teaches a flavor sheet for a smoking article (title, abstract) comprising a non-volatile matrix of film-forming coagulating material including natural polymers and derivatives thereof ([0027]) including cellulose and cellulose derivatives such as methyl cellulose, hydroxyethyl cellulose, hydroxypropyl cellulose, and carboxymethyl cellulose ([0031]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used methyl cellulose as in Ergle as the gelling agent in Kaljura in order to obtain the predictable result of forming a flavor-bearing sheet (Ergle, [0032]) with the benefit of minimizing the loss of flavoring (Ergle, [0032]). “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” MPEP 2144.07. Moreover, such a skilled artisan would have appreciated that such modification merely involves the substitution of known equivalents (i.e., substituting hydroxyethyl cellulose, hydroxypropyl cellulose, or carboxymethyl cellulose for methyl cellulose) known for the same purpose of forming flavored sheets. MPEP 2144.06(II).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kaljura et al. as applied to claim 1 above, and further in view of Nagai et al. (US 2020/0297027) and/or Batista et al. (US 2024/0090566).
Regarding claim 10, Kaljura discloses the smoking article as discussed above with respect to claim 1, wherein the amorphous solid may comprise a gelling agent comprising a hydrocolloid such as pectins, which is combined with a calcium source to form cross links (p. 8, ll. 4-24).
However, Kaljura does not explicitly teach the hydrocolloid material includes low methoxyl pectin (LM-pectin) including a carboxyl group of less than 50% and having a characteristic of not gelating when cooled. Specifically, Kaljura does not disclose what form the pectin is in.
Nagai teaches a smoking article (abstract) comprising a filler comprising a gel comprising a gelling agent ([0057]), the gelling agent includes polysaccharides such as pectin, wherein LM-pectin has a degree of esterification of less than 50% ([0061]; “carboxyl group of less than 50%”).
Batista discloses an aerosol-generating article (abstract) comprising a flavor material, such as gel composition, including low methyoxyl pectin ([0051]), wherein adjusting the amount of LM pectin within the flavor material affects the resistance to deformation strength of the flavor material ([0099]).
Therefore, Batista establishes the LM pectin is a result-effective variable that affects the resistance to deformation strength of the flavor material.
It would have obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have specified the type of pectin in Kaljura to be LM-pectin as in Nagai and/or Batista because (a) such a modification is obvious to try because there are only two finite number of pectin forms (HM pectin and LM pectin) with a reasonable expectation of success in forming a flavor sheet, (b) such a modification is beneficial for production suitability and durability (Nagai, [0012]), and/or (c) such a modification merely involves routine optimization of a result effective variable involving changing the amount of LM pectin to obtain various amounts resistance to deformation strength of the flavor material (Batista, [0099]). See MPEP 2144.05 II(B).
Regarding the claim limitation “having a characteristic of not gelating when cooled,” the use of LM pectin in Nagai and Batista are considered to meet such a limitation because “[A] chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” MPEP 2112.01(II).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/281525 (reference application).
Regarding claim 1, the copending application recites a smoking article comprising:
a smoking material portion;
a filter portion; and
a wrapper configured to wrap around at least a portion of the smoking material portion or the filter portion, wherein a flavoring sheet is disposed on at least a portion of the smoking material portion, the filter portion, or the wrapper, and the flavoring sheet includes a hydrocolloid material and a fat-soluble flavoring (claim 8).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application recites alternative locations for the wrapper and flavoring sheet, and the copending application is narrower in the flavoring sheet composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, and 12 of copending Application No. 18/287380 (reference application).
Regarding claim 1, the copending application recites: a smoking article comprising:
a smoking material portion;
a filter portion; and
a wrapper wrapped around at least a portion of the smoking material portion, wherein a porous flavoring sheet that serves as a sound generating element is applied, at least partially, to the smoking material portion or the wrapper, wherein the flavoring sheet includes a hydrocolloid material and an oil-type flavoring (claim 1).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application recites alternative locations for the flavoring sheet, the copending application is narrower in the flavoring sheet composition, and the copending application is narrower in generating a sound in the flavor sheet.
Regarding claim 4, the copending application recites: wherein the flavoring sheet is disposed on an inner side of the wrapper (claim 7).
Regarding claim 9, the copending application recites: wherein: the hydrocolloid material includes at least one selected from the group consisting of gelatin, agar, gellan gum, guar gum, xanthan gum, glucomannan, hydroxypropyl methylcellulose (HPMC), methyl cellulose (MC), ethyl cellulose (EC), and carboxymethyl cellulose (CMC) (claim 12).
Conclusion
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/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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