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 1-14 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-8) in the reply
filed on 06/05/2026 is acknowledged.
Claims 9-14 remain withdrawn as being directed to a non-elected invention and not sharing unity of invention.
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 1-8 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.
Claim 1, line 1 is indefinite for reciting “a smoking material for smoking with smoke or oral smoking” because it is unclear what oral smoking is. It is not clear if oral smoking is the action of inhaling a smoking article or a smokeless tobacco product. If the intention is for the product to be used in both smoking and smokeless products then “oral smoking” needs to be amended. For purposes of examination, oral smoking is being interpreted as a smokeless tobacco product for oral use.
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) 1-2, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bagheri (US-20220322730-A1) and further in view of White (US-11510870-B1).
In regards to claim 1, Bagheri directed to a nicotine gel composition for a smoking material (abstract and [0001]) discloses the composition comprising an aqueous polysaccharide-based gellant system comprising a polysaccharide and a gel modifier, and nicotine or a salt thereof ([0006]), wherein both polysaccharides and gel modifiers can readily tune the viscosity of the gellant system (i.e., examples of binders).
Bagheri further discloses the composition can comprise a humectant such as glycerin included in an amount of less than 20 weight percent which overlaps the claimed range of 10 to 40 weight percent ([0072]).
Bagheri further discloses the gellant system includes a polysaccharide and a secondary component such as a gel modifier including secondary polysaccharides ([0035]). The polysaccharides within Bagheri’s disclosure include starches and a cellulose matrix such as methylcellulose (i.e., binder comprising starch and methylcellulose) ([0041] and [0081]). Bagheri further discloses the polysaccharide can include combinations of a starch and cellulose, such as methyl cellulose, ([0041]).
Bagheri further discloses dextran within the composition ([0069]) and the use of starches within the composition ([0041]) but does not explicitly disclose the composition comprising dextrin.
White, directed to substrates for vaporizing and delivering an aerosol, discloses a composition including glycerine and methyl cellulose (column 17, lines 1-15).
White further discloses the use of starches within the composition such as dextrin (column 17, lines 19-26).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bagheri by making the starch of Bagheri dextrin, as taught by White, because both are directed to smoking materials for smoking articles, White teaches starches include dextrin in the art (column 17, lines 19-26), and this merely involves applying a known starch used in the art to the composition of Bagheri which already teaches the use of starches to yield predictable results.
In regards to claim 2, Bagheri discloses superabsorbent polymers may comprise chemically modified starch and cellulose like methyl cellulose ([0107]-[0108]) and further discloses the use of a polysaccharide, which may include one of or combinations of a starch and cellulose, such as methyl cellulose ([0041]). Bagheri further discloses the polysaccharide of the gellant system can be any combination of the polysaccharides disclosed ([0041]).
Bagheri further discloses the viscosity of the gellant systems can be readily tuned, including by way of controlling the concentration of the gellant system components (both the polysaccharides and gel modifiers). Such control of viscosity may allow for a gellant system that prevents or greatly reduces problems of leakage encountered when employing liquids in vapor devices ([0025]).
Modified Bagheri teaches the starch is a dextrin (White column 17, lines 19-26) and Bagheri further discloses the polysaccharide in a weight ratio anywhere from 1 to 50 weight percent ([0062]), but does not explicitly disclose the binder comprises methylcellulose and dextrin at a weight ratio of 5:5 and 7:3.
While Bagheri does not explicitly disclose the weight ratio of methylcellulose and dextrin from 5:5 to 7:3, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the weight ratio of the methylcellulose to the starch dextrin since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed weight ratio is critical and has unexpected results. In the present invention, one would have been motivated to optimize the weight ratio motivated by the desire to control the concentration of the gellant system components to readily tune the viscosity of the gellant system to greatly reduce problems of leakage ([0025]).
Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of methylcellulose to starch dextrin to obtain a desired weight ratio and viscosity because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 II(B)).
In regards to claim 6, Bagheri discloses the smoking material in the form of beads ([0019]-[0023] and [0039]) or in a film/strip (i.e., sheets) ([0076]).
In regards to claim 7, Bagheri discloses the smoking material in the form of tobacco beads, primarily used with vaporizer devices ([0002]-[0005]), but does not explicitly disclose the smoking material is used by being inserted into an oral cavity.
However, how the smoking material is used is merely intended use of the product and not a structural difference or compositional difference of the smoking material. The smoking material of Bagheri would be able to be inserted into an oral cavity and therefore is capable of performing the intended use of the product and meets the claim. See MPEP (2111.02 (II)).
In regards to claim 8, Bagheri discloses the smoking material is used by inserting into a heating chamber of an aerosol generating device ([0137]).
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Bagheri (US-20220322730-A1) in view of White (US-11510870-B1), as applied to claim 1 above, and further in view of Sutton et al. (US-20180343920-A1).
In regards to claims 3-4, Bagheri discloses the smoking material is porous ([0117]-[0118]), but does not explicitly disclose the smoking material is packaged in a pouch and the pouch is a porous material.
Sutton, directed to a pouch for use with apparatus for heating smokable material, discloses a pouch comprising smokable material and the pouch made of a porous material for permitting aerosol to pass through the pouch ([0004]).
Sutton further discloses the smokable material included in the pouch includes gel smoking material ([0048]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Modified Bagheri by making the gel composition of Bagheri comprise a porous pouch, as taught by Sutton, because both are directed to electronic cigarettes, Sutton teaches it is known in the art to incorporate gel tobacco products into pouches ([0048]) and further teaches the pouch comprises a porous material to permit aerosol to pass through the pouch ([0004]), and this merely involves applying a known technique of using a porous pouch to surround smokable material of a similar product to yield predictable results.
In regards to claim 5, Modified Bagheri discloses the pouch is at least partly wrapped by a first material 51 which can be a foil (i.e., metal material) (Sutton [0054]).
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Carroll et al. (US-20180235273-A1) and further in view of Press et al. (US-20250212935-A1).
In regards to claim 1, Carroll directed to tobacco beads discloses, a smoking material for oral use, the smoking material comprising, glycerin ([0028]), a binder comprising methylcellulose ([0012] and [0045]), dextrin (i.e., binder) ([0010]), and nicotine ([0044]).
Carroll does not explicitly disclose glycerin in an amount of 10 to 40wt%.
Press, directed to a composition comprising a coated aerosol-generating material discloses the coated composition may be provided as one or more beads and be provided in a pouch for either aerosol-generation or oral use ([0173] and [0189]).
Press further discloses a binder comprising one or more of cellulose derivatives and starches ([0130]), nicotine ([0129]), glycerol ([0127]), and excipients such as maltodextrin and/or cyclodextrins (i.e., dextrin) ([0120]).
Press further discloses the composition comprises glycerol (i.e., glycerin) in an amount from about 13 to 34 weight percent of the smoking material ([0117]), which overlaps the claimed range of 10 to 40 weight percent ([0072]).
Press further discloses the amount of glycerol in the aerosol material is important because it is both an aerosol-forming material and a plasticizer. If the concentration of glycerol is too high, it may be detrimental to the critical temperature of the product during the freeze-drying process and may result in collapse of the product if a critical temperature of the formulation is exceeded. On the other hand, sufficient glycerol should be included to provide the consumer with an adequate and pleasing aerosol ([0118]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Carroll by making the glycerin 10 to 40 weight percent of the smoking material, as taught by Press, because both are directed to smoking materials, Press teaches the weight percent of glycerin is known in the art and that the appropriate amount of glycerin is critical to prevent collapse of the product ([0118]), and this merely involves applying a known amount of glycerin of a similar product to yield predictable results.
In regards to claims 3-4, Carroll further disclose the tobacco beads can be packaged in porous wrapping material by fabrics, paper, or paper films and can be packaged in a pouch (i.e., porous pouch) ([0047]).
In regards to claim 6, Carroll discloses the smoking material in the form of beads ([0047]).
In regards to claim 7, Carroll discloses the tobacco beads are orally consumed by a consumer (i.e., inserted into an oral cavity) ([0023]) and provides a controlled desired flavor profile ([0053]).
In regards to claim 8, Carroll discloses the tobacco bead can be used alone or part of a larger smokeless tobacco product ([0047]), but does not explicitly disclose the smoking material inserted into an aerosol generating device.
However, how the smoking material is used is merely intended use of the product and not a structural difference or compositional difference of the smoking material. The smoking material of Carroll would be able to be inserted into an oral cavity and therefore is capable of performing the intended use of the product and meets the claim. See MPEP (2111.02 (II)).
In addition, Press discloses the coated composition may be provided as one or more tablets, beads or granules and these may, for example, be provided in a cartridge, pod or pouch. Alternatively, a coated tablet or bead may be provided for direct insertion into a device, for example into an appropriately configured chamber or receptacle of an aerosol-generating device ([0173]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to further modify Carroll by making the smoking material insertable into a smokeless product, such as an aerosol-generating device, as taught by Press because both are directed to smoking materials beads, Carroll teaches the smoking beads can be used in smokeless products, just is merely silent to the types of smokeless products and Press teaches an aerosol generating device for heating the smoking material ([0044] and [0189]), and this merely involves applying a known technique of using an aerosol generating device to aerosolize smoking material of a similar product to yield predictable results.
Conclusion
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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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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