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, 15-16, 20-23, 25, and 27-38 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims. Claims 2-14, 17-19, 24, and 26 are cancelled.
Response to Amendments
The amendments to the claims filed on July 2, 2026 are acknowledged.
Election/Restriction
Applicant's election without traverse of Claims 15-16, 20, and 28-38 in the reply filed on July 2, 2026 is acknowledged.
Claims 1, 21-23, 25, and 27 are withdrawn.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 15-16, 20, 33, and 36 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Ghanouni (WO 2020/025701 A1, cited on the IDS dated 1/31/2024).
Regarding Claim 15, Ghanouni, directed to aerosol generating substrates (pg 1, ln 30-32), teaches an aerosol generating composition comprising an aerosol-generating material (pg 1, ln 30-32, A first aspect of the invention provides an aerosol generating substrate comprising an aerosol generating material) comprising:
(a) aerosol-former material (pg 1, ln 30 – pg 2, ln 4, the aerosol generating material comprises an amorphous solid, the amorphous solid comprising: 1-60 wt% of a gelling agent; 5-80 wt% of an aerosol generating agent; and 1-70 wt% of an active ingredient);
(b) a first binder which is guar gum; (c) a second binder which is starch or modified starch (pg 1, ln 30 – pg 2, ln 4, the amorphous solid comprising: 1-60 wt% of a gelling agent; 5-80 wt% of an aerosol generating agent; and 1-70 wt% of an active ingredient; and pg 10, ln 1-27, The gelling agent comprises one or more compounds selected from the group comprising guar gum and starches (and derivatives)); and
(d) filler (pg 13, ln 23-25, the amorphous solid comprises less than 60 wt% of a filler).
Regarding Claims 16 and 20, Ghanouni teaches the aerosol-generating composition of claim 15, wherein the aerosol-generating composition further comprises tobacco material, wherein the aerosol-generating material is in the form of a shredded sheet and is blended with the tobacco material (pg 9, ln 5-13, The amorphous solid may be formed as a sheet. The aerosol generating material may be formed as a sheet and then shredded and incorporated into the article. In some cases, the shredded sheet may be mixed with cut rag tobacco and incorporated into the article).
Regarding Claim 33, Ghanouni teaches the aerosol-generating composition of claim 15, wherein the aerosol-former material comprises (or is) one or more of: glycerol, propylene glycol, diethylene glycol, triethylene glycol, tetraethylene glycol, 1,3-butylene glycol, erythritol, meso-Erythritol, ethyl vanillate, ethyl laurate, a diethyl suberate, triethyl citrate, triacetin, a diacetin mixture, benzyl benzoate, benzyl phenyl acetate, tributyrin, lauryl acetate, lauric acid, myristic acid, and propylene carbonate (pg 11, ln 12-13; the aerosol generating agent comprises one or more compound selected from erythritol, propylene glycol, glycerol, triacetin, sorbitol and xylitol).
Regarding Claim 36, Ghanouni teaches the aerosol-generating composition of claim 15, wherein the filler comprises (or is) wood pulp (pg 14, ln 2-4, The filler may comprise one or more organic filler materials such as wood pulp).
Claims 15 and 38 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fedeli (US 2024/0268442 A1).
Regarding Claim 15, Fedeli teaches an aerosol-generating composition comprising an aerosol-generating material ([0007] According to the present disclosure, there is provided an aerosol-forming substrate; The substrate is a material and a composition), the aerosol-generating material comprising:
(a) aerosol-former material ([0007], The aerosol-forming substrate may comprise, on a dry weight basis, between 7 and 60 wt % of an aerosol former);
(b) a first binder which is guar gum; (c) a second binder which is starch or modified starch ([0007], The aerosol-forming substrate may comprise, on a dry weight basis, between 2 and 10 wt % of a binder; and [0051] Suitable binders are well-known in the art and include, but are not limited to, guar gums, such as hydroxyethyl guar and hydroxypropyl guar; starches, such as modified or derivatized starches; and the like. It may be particularly preferable for the binder to be or comprise guar); and
(d) filler ([0007], The aerosol-forming substrate may comprise, on a dry weight basis, between 10 and 90 weight percent [wt %] thermally conductive particles; and [0013], some or all of the thermally conductive particles comprise one or more of graphite, expanded graphite, graphene, carbon nanotubes, charcoal, and diamond such as artificial diamond).
Regarding Claim 38, Fedeli teaches the aerosol-generating composition of claim 15, wherein the aerosol-generating material does not comprise active substance ([0053] Optionally, the substrate comprises nicotine; and [0064], Optionally, the aerosol-forming substrate is a tobacco-free aerosol-forming substrate; and [0061], Optionally, the substrate comprises at least one flavourant; and [0058] Optionally, the substrate comprises at least one botanical. Active substances such as nicotine, tobacco, flavors, or botanicals are all listed as optional components in Fedeli. Therefore, there must be embodiments of Fedeli wherein the aerosol-generating material does not comprise active substance).
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.
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.
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ghanouni (WO 2020/025701 A1, cited on the IDS dated 1/31/2024) in view of White (US 2015/0209530 A1).
Regarding Claims 28-30, Ghanouni teaches the aerosol-generating composition of claim 15, wherein the second binder is modified starch, wherein the modified starch is one or more of hydroxypropyl starch, carboxymethyl starch sodium, carboxymethyl starch, octenylsuccinic anhydride-modified starch, starch acetate, monostarch phosphate, distarch phosphate, distarch adipate, hydroxypropyl distarch phosphate, phosphorylated distarch phosphate, acetylated distarch phosphate and acetylated distarch adipate, wherein the modified starch comprises (or is) one or more of hydroxypropyl starch, carboxymethyl starch and carboxymethyl starch sodium.
White, directed to aerosol generating substrates ([0014), teaches an aerosol generating material comprising: an aerosol-former material; a binder; and a filler ([0014], the invention is embodied by a substrate configured for use with an aerosol agent delivery device to vaporize and deliver an aerosol agent to a user. The substrate includes a carrier and a paste that is applied onto at least one surface of the carrier and dried. The paste comprises an aerosol agent and an aerosol forming agent. The paste may further include a binder material (a hydrocolloid or a starch). The paste may further include an inorganic, inert filler material),
wherein the second binder is modified starch and the modified starch is hydroxypropyl starch ([0074]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to use hydroxypropyl starch as the second binder disclosed by Ghanouni because Ghanouni and White are directed to aerosol generating substrates, White demonstrates that hydroxypropyl starch is a suitable binder for aerosol generating materials comprising an aerosol former material and a filler (White, [0014], [0074]), and this involves substituting one starch for another to yield predictable results.
Claims 31-32, 34-35, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Ghanouni (WO 2020/025701 A1, cited on the IDS dated 1/31/2024).
Regarding Claims 31-32, Ghanouni teaches the aerosol-generating composition of claim 15, wherein the aerosol-generating material comprises the first and second binder in a total amount of about 1-60 wt% of the aerosol-generating material on a dry weight basis (pg 1, ln 30 – pg 2, ln 4, the amorphous solid comprising: 1-60 wt% of a gelling agent; 5-80 wt% of an aerosol generating agent; and 1-70 wt% of an active ingredient, wherein the weights are calculated on a dry weight basis),
but does not teach the aerosol generating material wherein the aerosol-generating material comprises the first binder in an amount of about 3-35 wt% of the aerosol- generating material on a dry weight basis, wherein the aerosol-generating material comprises the second binder in a total amount of about 1-20 wt% of the aerosol-generating material on a dry weight basis.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the aerosol generating material of Ghanouni wherein the aerosol-generating material comprises: the first binder in an amount of about 3-35 wt% of the aerosol-generating material; and the second binder in a total amount of about 1-20 wt% of the aerosol-generating material on a dry weight basis because Ghanouni discloses that the two binders may comprise up to 60 wt% of the aerosol generating material, and one of ordinary skill in the art would have been able to optimize the amounts of the first and second binders to achieve a suitable gelation of the aerosol generating material (Ghanouni, pg 10, ln 7-27). Further, because the claim only requires the first binder at 3 wt% and the second binder at 1%, the values would have been obtainable by one of ordinary skill in the art.
Regarding Claims 34-35, Ghanouni teaches the aerosol-generating composition of claim 15, wherein the aerosol-generating material comprises aerosol-former material in a total amount of about 1-80 wt% of the aerosol-generating material on a dry weight basis, wherein the aerosol-generating material comprises aerosol-former material in a total amount of about 40-60 wt% of the aerosol-generating material on a dry weight basis (pg 11, ln 7-11, the amorphous solid may comprise from about 5wt%, l0wt%, l5wt%, or 20wt% to about 80wt%, 70wt%, 60wt%, 55wt%, 50wt%, 45wt% 40wt%, or 35wt% of an aerosol generating agent (all calculated on a dry weight basis)).
The ranges for the aerosol-former material amount disclosed by the prior art overlap the claimed ranges, and therefore the claimed ranges are considered prima facie obvious. See MPEP § 2144.05 (I).
Regarding Claim 37, Ghanouni teaches the aerosol-generating composition of claim 15, wherein the aerosol-generating material comprises filler in a total amount of at least 15 wt% of the aerosol-generating material on a dry weight basis (pg 13, ln 23-25, the amorphous solid comprises less than 60 wt% of a filler; and pg 39, ln 23-24; All percentages by weight described herein (denoted wt%) are calculated on a dry weight basis, unless explicitly stated otherwise).
The range for the filler amount disclosed by the prior art overlaps the claimed range, and therefore the claimed range is considered prima facie obvious. See MPEP § 2144.05 (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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