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 and 4-12 are pending and are subject to this Office Action. Claims 1 and 4-5 have been amended. Claims 2-3 have been canceled. Claims 11-12 are newly added.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 3/18/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant’s arguments, see pages 5-10, filed 3/18/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 102 have been fully considered and are persuasive. The Applicant has amended claim 1 to require wherein the flavoring sheet is configured to generate a sound when burned or heated and wherein the flavoring sheet includes a hydrocolloid material and an oil-type flavoring, whereas previously this was not required. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previously applied art and newly found art.
The following is a modified rejection made based on the claim amendments.
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.
Claim(s) 1, 5-9 and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (WO2021/125445, citations will refer to the English translation provided) in view of Reevell (US2019/0261684).
Regarding claims 1 and 12, Lee discloses:
A smoking article (1) comprising: a smoking material portion (12); a filter portion (11, figure 1, [0039]); and a wrapper wrapped around at least a portion of the smoking material portion ([0043]).
Wherein a porous flavoring sheet (polysaccharide sheet 30) that serves as a sound generating element (sounds generation [0076]) is applied, at least partially, to the smoking material portion or the wrapper ([0073] and [0075]).
Wherein the flavoring sheet is configured to generate a sound when burned or heated ([0050]: producing sound during the combustion process).
Wherein the flavoring sheet includes an oil-type flavoring ([0079]: clove extract may be added to the polysaccharide material, [0048]: which includes clove oil).
Lee does not appear to explicitly disclose (I) wherein the flavoring sheet includes a hydrocolloid material and (II) wherein the flavoring sheet includes, with respect to a total 100 parts by weight, 10 to 30 parts by weight of the oil-type flavoring.
In regard to (I), Reevell, directed to a sheet of aerosol generating material,
Sheets of homogenized tobacco material for use in aerosol-generating articles ([0054]). As both Lee and Reevell are directed to sheets of material for use in an aerosol-generating article, Reevell is considered to be analogous art.
The sheet of material may have an extrinsic binder to help agglomerate the particulate material. Suitable extrinsic binders include guar gum, xanthan gum methyl cellulose (MC), ethyl cellulose (EC), and carboxymethyl cellulose (CMC) ([0054]-[0055]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the flavoring sheet of Lee by incorporating an extrinsic binder such as guar gum, xanthum gum, methyl cellulose (MC), ethyl cellulose (EC), and carboxymethyl cellulose (CMC) as taught by Reevell, because both Lee and Reevell are directed to sheets of material for use in an aerosol-generating article, Reevell teaches this helps to agglomerate the particulate material of the sheet, and this merely involves combining prior art elements according to known methods to yield predictable results.
The flavoring sheet having an extrinsic binder defines a hydrocolloid material that 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) as recited in claims 1 and 12.
In regard to (II), Lee is silent to the amount of the oil-type flavoring in the flavoring sheet.
However, Lee teaches that the amount of clove extract in the polysaccharide material improves the amount of the aroma development of clove flavor ([0079]).
One of ordinary skill would recognize that the amount of the oil-type flavoring in the flavoring sheet would affect the amount of the aroma development of the flavor. Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to determine an optimum or workable range of the amount of oil-type flavoring in the flavoring sheet through routine experimentation and arrive at the claimed range or ranges overlapping the claimed range, as one of ordinary skill would know to modify the amount of oil-type flavoring based on the amount of the aroma development, and it has been held that discovering an optimum or workable range of a result effective variable involves only routine skill in the art.
Regarding claim 5, Less teaches wherein the flavoring sheet further includes a bulking agent ([0051]: starch, which paragraph [0049] of the instant specification teaches is a bulking agent).
Regarding claim 6, Lee discloses wherein the flavoring sheet is added in a cut form to the smoking material portion (the polysaccharide sheet may be added to the smoking material portion [0073] and the size of the sheet may be controlled [0076] which therefore reads on a cut form).
Regarding claim 7, Lee teaches wherein the flavoring sheet is disposed on an inner side of the wrapper [0075].
Regarding claim 8, Lee teaches:
The flavoring sheet includes a plurality of sheets (arranging polysaccharide sheets at regular intervals [0076]).
The plurality of sheets are disposed apart from each other on the inner side of the wrapper (smaller polysaccharide sheets in the wrapper area closer to the filter section and larger polysaccharide sheets in the wrapper area farther from the filter section [0076]).
Regarding claim 9, Lee teaches:
The flavoring sheet includes a plurality of sheets (arranging polysaccharide sheets at regular intervals [0076]).
Sizes of the plurality of sheets gradually increase or decrease toward a downstream end (smaller polysaccharide sheets in the wrapper area closer to the filter section and larger polysaccharide sheets in the wrapper area farther from the filter section [0076]).
Regarding claim 11, Lee teaches: the polysaccharide substance may be flavored with clove extract [0080], and therefore it is evident that he porous flavoring sheet includes a plurality of pores formed therein. As the polysaccharide material produces generates sound when the crystal structure breaks or cracks during combustion ([0050]), it is evident that the clove extract within the pores of the material would be released when the structure breaks during combustion, and thus define when the flavoring sheet is burned or heated, the sound is generated as the pores rupture and the oil-type flavoring fixed therein is released.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (WO2021/125445, citations will refer to the English translation provided) in view of Reevell (US2019/0261684) as applied to claim 1 above, and further in view of Chang (US2021/0000161).
Regarding claim 4, Lee does not appear to disclose wherein the flavoring sheet further includes a plasticizer.
Chang, directed to a film-type smokeless tobacco, teaches:
A smokeless tobacco product in film in sheet form ([0003]).
Adding a plasticizer to the composition improves the moldability ([0051]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the flavoring sheet of Lee by incorporating a plasticizer as taught by Chang, because both Lee and Chang are directed to aerosol generating products in sheet form, Chang teaches adding a plasticizer improves the moldability of the sheet, and this merely involves combining prior art elements according to known methods to yield predictable results
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (WO2021/125445, citations will refer to the English translation provided) in view of Reevell (US2019/0261684) as applied to claim 7 above, and further in view of Hejazi (US2020/0288787).
Regarding claim 10, Lee teaches the flavoring sheet includes a plurality of sheets (arranging polysaccharide sheets at regular intervals [0076]).
Lee further teaches:
The size of the polysaccharide sheet e.g. by changing the length, thickness, placement location, placement spacing, and/or placement shape, the sound generation pattern when smoking can be controlled [0076].
The polysaccharide substance may be flavored with clove extract [0080].
Lee does not appear to explicitly disclose the porosities of the sheets gradually increase or decrease toward a downstream end.
However, Hejazi, directed to an aerosol delivery device providing flavor control, teaches the amount of flavor material that is made available is based on the pore size [0096].
As such, Hejazi is reasonably considered to teach that amount of flavor can be controlled by pore size of the polysaccharide material. Therein, one of ordinary skill would recognize that the pore size would affect the amount of flavor material and thus affect flavor control. As such, based on the recognition that pore size affects flavor control, it would be obvious for one having ordinary skill in the art to modify Lee to have increasing or decreasing porosities from one end to the other in order to affect flavor to be more intense in the start or at the end of the article.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 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, Philip Louie can be reached at (571) 270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
Prosecution Insights