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 .
Response to Amendment
The office action is in response to Applicant’s amendment filed on 05/19/2026.
Claims 1-8 and 11-20 are pending.
Claims 1-2 are amended.
Claim 9 is cancelled.
The rejection of claim 2 under 35 U.S.C. 112(b) is withdrawn due to amendments made to the claims. The rejection of claim 11 under 35 U.S.C. 112(b) is withdrawn due to support provided by the Applicant during the interview dated 05/07/2026.
Response to Arguments
Applicant' s arguments, see pages 5-11, filed 05/19/2026, with respect to the rejection(s) of claims 1-20 under 35 U.S.C. 102 and 103, respectively, have been fully considered and are persuasive. The Applicant has amended claim 1 to include limitations that were not previously presented. Specifically, the Applicant has introduced limitations regarding the composition of claim 1 comprising an aerosol-source material (C) from 1 to 12 mass% per dry weight in the composition. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view newly found prior art.
On pages 9-10, the Applicant further argues that the CN’ 405 reference provided by the Examiner during the interview on 05/07/2026, does not teach the claimed aerosol-source dry mass percent because Xu teaches an embodiment wherein both the hydrophilic and lipophilic aerosol generating agents, which are two kinds of aerosol agents in a total amount of 20% the dry weight of the composition. Therefore, Xu teaches an aerosol-source material above the claimed eight.
The Examiner respectfully does not find the arguments persuasive because the claim requires an aerosol-source material from 1 to 12mass% and does not limit all aerosol-source materials to being at most 12mass%, and instead is broad leaving the requirement of the claim only being that an aerosol-source material is from 1 to 12mass% of the dry weight of the composition, which Xu teaches.
Furthermore, Xu teaches that the aerosol-generating agent, which includes both the hydrophilic aerosol generating agent and at least one lipophilic aerosol generating agent, comprises 10-25% of the total weight of the tobacco sheet by dry weight ([0028]). Therefore, even if the lipophilic aerosol generating agent was interpretated as an aerosol-source material, there is still a range provided by the prior art that is within the claimed range and therefore would be prima facie obvious.
Furthermore there is nowhere in the Applicant’s Specification that claims coconut oil as an aerosol-source material, therefore, coconut oil is not being interpreted as an aerosol-source material. The hydrophilic aerosol generating agent, which comprises glycerol, is what is being interpreted as the aerosol-source material since that is what is in line with the instant specification.
The following is a modified rejection based on amendments made to the claims.
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.
Claims 1-3, 6, 10, 13, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN-111084405-A, hereinafter referring to the English Translation provided).
In regards to claim 1, Xu, directed to a tobacco composition comprising:
(A) a tobacco material ([0033]);
(B) an emulsifier comprising saturated fatty acid additive ([0018];[0020]); and
(C) a hydrophilic aerosol generating agent such as glycerol (i.e., aerosol source material) ([0019]),
Wherein:
The component (B) is a saturated fatty acid, such as sorbitan monoplamitate ([0018];[0020];[0030]) which is an ester of palmitic acid which is one of the listed preferable saturated fatty acids used in the tobacco composition of the instant Specification ([0018]) and thus would have a molar mass of 200 to 350 g/mol since it has been acknowledged by the Applicant as a suitable saturated fatty acid. Therefore, sorbitan monopalmitate would reasonably read on an ester of a fatty acid with a molar mass within the claimed range of 200 to 350g/mol,
The composition contains component (B) at 3-5% of the total weight of the tobacco sheet by dry weight ([0028]). The range disclosed by the prior art overlaps the claimed range of component (B) in a range of 0.01 to 3 mass% per dry weight in the composition, and is therefore considered prima facie obvious, and
Component C in dry weight of 10% of the composition ([0050]). The range disclosed by the prior art overlaps the claimed range of component (C) in a range of 1 to 12 mass% per dry weight in the composition, and is therefore considered prima facie obvious.
In regards to claim 2, Xu discloses the component (B) can be a single saturated fatty acid or a single ester of a saturated fatty acid ([0018];[0020]).
In regards to claims 3 and 13, Xu discloses the saturated fatty acid is sorbitan monopalmitate, which comprises palmitic acid and has a fatty acid moiety with 16 carbon atoms ([0020]), which falls within the claimed range of a fatty acid moiety with 12 to 20 carbon atoms.
In regards to claims 6 and 19-20, Xu discloses the composition comprises flavorings, including natural plant flavorings, from 1 to 20% of the total weight by dry weight ([0025];[0028]). The range disclosed by the prior art overlaps the claimed range of natural plant flavoring agent at 0.5 go 3 mass% per dry weight in the composition.
In regards to claim 10, Xu discloses the tobacco composition is formed as a sheet ([0005];[0009]-[0010]).
Claims 4-5, 7-8 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN-111084405-A, hereinafter referring to the English Translation provided) as applied to claim 1 above, and further in view of Abi et al. (US-20230320406-A1).
In regards to claims 4 and 14-15, Xu discloses natural and artificial flavorings ([0025]), but does not explicitly disclose the composition further comprising a liquid sugar at 1 to 10% mass per dry weight in the composition.
Abi, directed to an aerosol-generating material for use in aerosol generation, discloses the aerosol-generating material comprises tobacco (i.e., tobacco composition) ([0098]).
Abi further discloses the composition can comprises flavorants, additives, active agents like caffeine and nicotine, and acids (abstract, [0112], and [0119]).
Abi further discloses the flavorant in a weight percent from at least 0.1% to about 40% on a dry weight basis ([0119]) and the flavorant can include sugar or sugar substitutes and can be in the form of a liquid such as an oil (i.e., liquid sugar) ([0120]). The range disclosed by the prior art overlaps the claimed range of liquid sugar at 1 to 10mass% per dry weight in the composition and is therefore considered prima facie obvious.
Abi further discloses flavorants such as sugar, are used to create a desired taste, aroma, or other somatosensorial sensation for the consumer ([0120]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Xu by making the tobacco composition further comprise liquid sugar from 1 to 10 mass%, as taught by Abi because both are directed to tobacco compositions for smoking articles, Abi teaches flavorants like sugar enhance the taste and sensations for the user ([0120]), and this merely involves applying a known technique of using a flavorant of a similar smoking composition to yield predictable results.
In regards to claims 5 and 16-18, Xu discloses tobacco dust, tobacco powder, tobacco stems, and leaves ([0021]) but is silent to the type of tobacco used in the composition and therefore does not disclose the tobacco material (component (A)) is derived from an oriental species at 10 mass% or less.
Abi, directed to an aerosol-generating material for use in aerosol generation, discloses the aerosol-generating material comprises tobacco (i.e., tobacco composition) ([0098]).
Abi further discloses the tobacco material (Component (A)) can include oriental tobacco ([0400]) and the tobacco material is anywhere from 1 to 65 dry weight percent of the entire composition ([0110]). The range disclosed by the prior art overlaps the claimed range of the Component A contains a material derived from an oriental species at 10 mass% per dry weight or less in the composition and is therefore considered prima facie obvious.
Therefore, before the effective filling date of the claimed invention, it would be obvious
to modify Xu by making the tobacco an oriental species comprising 10 mass% dry weight or less of the total composition, as taught by Abi, because one of ordinary skill in the art would look to a similar reference for a known type of tobacco material and a common weight percent for similar tobacco compositions, especially when the prior art is silent to specific types of tobacco and their weight percentages, and this merely involves applying known weight percents and a known form of tobacco of a similar composition to yield predictable results.
In regards to claim 7, Xu discloses the composition comprising nicotine ([0005]), but does not explicitly disclose the composition comprises nicotine at 2 mass% or more per dry weight in the composition.
Abi, directed to an aerosol-generating material for use in aerosol generation, discloses the aerosol-generating material comprises tobacco (i.e., tobacco composition) ([0098]).
Abi further discloses the aerosol-generating material comprises nicotine from 1 to 20 wt% calculated on a dry weight basis ([0111]). The range disclosed by the prior art overlaps the claimed range of nicotine at 2 mass% or more per dry weight in the composition and is therefore considered prima facie obvious.
Abi further discloses the tobacco extract is what contains the nicotine concentration and has a concentration from 1 to 20 wt% ([0111]).
Therefore, before the effective filling date of the claimed invention, it would be obvious to modify Xu by making the tobacco composition comprise nicotine at 2 mass% or greater, as taught by Abi, because one of ordinary skill in the art would look to a similar reference for a known concentration of nicotine for similar tobacco compositions, especially when the prior art is silent to a specific nicotine concentration present in the tobacco material, and since the prior art teaches a similar tobacco extract which is known to have a certain nicotine concentration, this merely involves applying a known amount of nicotine of a similar tobacco extract of a similar composition to yield predictable results.
In regards to claim 8, Xu discloses the composition comprising nicotine ([0005]), but does not explicitly disclose the composition comprises nicotine at 1.5 mass% or less per dry weight in the composition.
Abi, directed to an aerosol-generating material for use in aerosol generation, discloses the aerosol-generating material comprises tobacco (i.e., tobacco composition) ([0098]).
Abi further discloses the aerosol-generating material comprises nicotine from 1 to 20 wt% calculated on a dry weight basis ([0111]). The range disclosed by the prior art overlaps the claimed range of nicotine at 1.5 mass% or less per dry weight in the composition and is therefore considered prima facie obvious.
Abi further discloses the tobacco extract is what contains the nicotine concentration and has a concentration from 1 to 20 wt% ([0111]).
Therefore, before the effective filling date of the claimed invention, it would be obvious to modify Xu by making the tobacco composition comprise nicotine at 1.5 mass% or less, as taught by Abi, because one of ordinary skill in the art would look to a similar reference for a known concentration of nicotine for similar tobacco compositions, especially when the prior art is silent to a specific nicotine concentration present in the tobacco material, and since the prior art teaches a similar tobacco extract which is known to have a certain nicotine concentration, this merely involves applying a known amount of nicotine of a similar tobacco extract of a similar composition to yield predictable results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN-111084405-A, hereinafter referring to the English Translation provided) as applied to claim 1 above and further in view of Frey et al. (https://pmc.ncbi.nlm.nih.gov/articles/PMC2838675/).
In regards to claim 11, Xu discloses a method of manufacturing the tobacco composition of claim 1, the method comprising:
Preparing a slurry of the tobacco material, by mixing component (A) ([0070]),
A saturated fatty acid ([0070]), and
Water and glycerine (i.e., a medium) ([0070]).
Xu does not explicitly disclose the component (B) (fatty acid) is a powder and does not explicitly disclose a medium such that the powder is maintained in a powder state.
However, Xu does disclose the medium comprising glycerine and water, which the Applicant states is what a saturated fatty acid additive is generally insoluble in, therefore it would be obvious to one of ordinary skill in the art that the same medium would provide the same results, and Xu reads on the claim limitation “a medium such that the powder is maintained in a powder state”.
Xu teaches a saturated fatty acid additive such as sorbitan monopalmitate (ester of palmitic acid) ([0020]), but does not explicitly disclose a fatty acid which is partially or entirely powder.
Frey directed to the function importance of the NH2 terminal insertion sequence of lung surfactant protein B discloses the materials used include palmitic acid in the powder form (page 3, paragraph 2).
Since Frey teaches it is known in the art that saturated fatty acids like palmitic acid are sold in the powder form, it would be obvious to one of ordinary skill in the art that Xu would teach palmitic acid (Component (B)) as a powder, because Xu already discloses the tobacco is in a powdered form, Xu is merely silent to the form of Component (B), and Frey teaches it is known in the art to sell palmitic acid as a powder (Frey page 3, paragraph 2). Therefore it would be prima facie obvious that Xu in view of Frey would teach palmitic acid (Component (B)) is at least partially in the form of a powder.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (CN-111084405-A, hereinafter referring to the English Translation provided) in view of Frey et al. (https://pmc.ncbi.nlm.nih.gov/articles/PMC2838675/), as applied to claim 11 above, and further in view of Schmidt et al. (US-4144894-A).
In regards to claim 12, Xu discloses the tobacco composition forms a slurry and comprises a binder ([0015]), but is silent to the viscosity of the slurry being from 100,000 to 200,000 mPa.s.
Schmidt directed to a reconstituted tobacco composition and process for manufacturing the reconstituted tobacco composition, discloses castable tobacco slurries with a range of viscosities responsive to temperature (column 2, lines 35-44).
Schmidt further discloses the addition of tamarind gum (i.e., binder) creates a greater viscosity that is developed in the course of drying and prevents heat-cracking of the tobacco during drying (column 2, lines 45-50).
Schmidt further discloses the viscosity of the tobacco slurry can be from 500 to 500,000 centipoises (column 4, lines 58-65). It is noted that 1 centipoises is equal to 1 mPa.s. The range disclosed by the prior art overlaps the claimed range of adjusting the viscosity of the slurry to 100,000 to 200,000 mPa.s and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Xu by making the tobacco compositions binder tamarind gum, to adjust the slurry to the claimed viscosity, as taught by Schmidt, because both are directed to tobacco compositions for smoking articles, Schmidt teaches the addition of tamarind gum creates a greater viscosity which prevents heat-cracking of the tobacco during drying (column 2, lines 45-50), and this merely involves applying a known binder to adjust the viscosity to a known value of a similar smoking composition to yield predictable results.
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 MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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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.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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