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
Claims 1, 4-6, 8-10, 14 and 16-21 are amended. Claims 2, 22, 27, 30 and 32 are withdrawn. Claims 3, 7, 11-13, 15, 23-26, 28-29, 31 and 33 are cancelled. Claims 1, 4-6, 8-10, 14 and 16-21 are presently examined.
Applicant’s arguments regarding the objection to abstract have been fully considered and are persuasive. The objection of 6/3/2026 is withdrawn.
Applicant’s arguments regarding the notation regarding the use of a trade name and/or mark used in commerce have been noted, however, the Office action of 6/3/2026 did not object to any allegedly improper use of such name and/or mark.
Applicant’s arguments regarding the rejection under 35 USC 112(b) have been fully considered and are persuasive. The rejection of 6/3/2026 is overcome.
Applicant’s arguments regarding the rejection under 35 USC 112(d) have been fully considered and are persuasive. The rejection of 6/3/2026 is overcome.
Specification
The use of the term Drambuie (page 25, line 20), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities: The trade name and/or mark used in commerce “Drambuie” is used without accompanying generic terminology (page 25, line 20). Appropriate correction is required.
Claim Interpretation
Regarding claim 1, the claim recites the limitation “wherein the aerosol-generating composition is in the form of a cut or shredded sheet,” which is considered to be a limitation regarding the method by which the claimed composition is made. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113 I. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required the aerosol generating composition to be in pieces that are formed by any method.
Regarding claim 18, the claim recites the limitation “wherein the aerosol-generating composition is in the form of a cut or shredded sheet,” which is considered to be a limitation regarding the method by which the claimed composition is made. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113 I. Therefore, for the purposes of this Office action, the limitation will be interpreted as if it required the aerosol generating composition to be in pieces that are formed by any method.
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)(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 1, 3-6, 14 and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Wagner (US 12,514,284).
Regarding claim 1, Wagner discloses an aerosol forming substrate (figure 8, reference numeral 10) that has adhesive applied to it and set (figure 8, reference numeral 47) so that susceptor patches are attached to it (column 14, lines 29-38, figure 8, reference numeral 28). The aerosol generating substrate is then cut into strips (column 6, lines 29-39, figure 1b, reference numeral 15), which is considered to meet the claim limitation of the composition being in the form of a cut or shredded sheet, that surround an inductively heatable susceptor (column 6, lines 40-48, figure 1b, reference numeral 13), which is considered to meet the claim limitation of a susceptor partially embedded in an aerosol forming substrate. The aerosol generating substrate comprises an aerosol former (column 5, lines 5-14).
Regarding claim 3, Wagner discloses that the aerosol generating substrate is in the form of a sheet that is then cut into strips (column 6, lines 29-39, figure 1b, reference numeral 15), which is considered to meet the claim limitation of a cut sheet.
Regarding claim 4, Wagner discloses that susceptors generate heat when an alternating magnetic field is applied to them (column 1, lines 40-53).
Regarding claim 5, Wagner discloses that the susceptors patches have a width of 0.1 mm to 7 mm and a length of 5 mm to 50 mm (column 13, lines 64-67, column 14, lines 1-7), which are considered to be the dimensions that would form a strip.
Regarding claim 6, Wagner discloses that the susceptor material is a web (column 5, lines 52-57).
Regarding claims 14 and 16, Wagner discloses that the aerosol generating material is reconstituted tobacco (column 4, lines 31-40).
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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wagner (US 12,514,284) in view of Rojo-Calderon (US 11,632,978).
Regarding claim 8, Wagner discloses all the claim limitations as set forth above. Wagner does not explicitly disclose the susceptor being an embedded fibrous sheet.
Rojo-Calderon teaches an aerosol generating article having a susceptor material (abstract) in which fibers of susceptor material is embedded into an aerosol forming substrate to provide a large interface and good heat contact (column 6, lines 63-67, column 7, lines 1-4). The susceptor material is sheet-like (column 6, lines 43-47), which is considered to meet the claim limitation of a sheet.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the embedded susceptor fibers of Rojo-Calderon as the susceptor of Wagner. One would have been motivated to do so since Wagner teaches that embedding fibers of susceptor material into an aerosol forming substrate provides a large interface and good heat contact.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Wagner (US 12,514,284) in view of Rogan (US 12,167,753).
Regarding claim 9, Wagner discloses all the claim limitations as set forth above. Wagner does not explicitly disclose the susceptor being shaped as a closed loop.
Rogan teaches an aerosol generating article including an aerosol generating material with a first region (abstract, figure 4B, reference numeral 12) that contains an inductively heatable susceptor having a loop shape (column 11, lines 59-65, figure 4B, reference numeral 22).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the central susceptor of Wagner have the shape of Rogan. One would have been motivated to do so since Rogan teaches a suitable shape for a susceptor embedded in an aerosol generating material.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wagner (US 12,514,284) in view of Frankenburg (US 2,592,554).
Regarding claim 10, Wagner discloses all the claim limitations as set forth above. Wagner does not explicitly disclose the adhesive being non-cellulosic.
Frankenburg teaches a layered fiber tobacco article that functions as a coherent mass that are held together using a binding substance (column 5, lines 3-14). The adhesive is water-soluble acid polysaccharide compounds (column 7, lines 72-75, column 8, lines 1-23).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the polysaccharide of Frankenburg as the adhesive of Wagner. The selection of a known material based on its suitability for its intended use supports prima facie obviousness. See MPEP § 2144.07.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Wagner (US 12,514,284) in view of Ajithkumar (US 12,588,699).
Regarding claim 17, Wagner discloses all the claim limitations as set forth above. Wagner does not explicitly disclose the aerosol generating substrate made from a non-tobacco material.
Ajithkumar teaches an aerosol generating article having an aerosol forming substrate made from non-tobacco plant particles (abstract) that provides improved aerosol delivery (column 4, lines 65-67, column 5, lines 1-10).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the non-tobacco plant material of Ajithkumar as the aerosol generating substrate of Wagner. One would have been motivated to do so since Ajithkumar teaches an aerosol generating material that provides improved aerosol delivery.
Claims 18-19 and 21 are rejected under 35 U.S.C. 103 as being obvious over Wagner (US 12,514,284) in view of Mua (US 2021/0195938).
Regarding claim 18, Wagner discloses an aerosol forming substrate (figure 8, reference numeral 10) that has adhesive applied to it and set (figure 8, reference numeral 47) so that susceptor patches are attached to it (column 14, lines 29-38, figure 8, reference numeral 28). The aerosol generating substrate is then cut into strips (column 6, lines 29-39, figure 1b, reference numeral 15), which is considered to meet the claim limitation of the composition being in the form of a cut or shredded sheet, that surround an inductively heatable susceptor (column 6, lines 40-48, figure 1b, reference numeral 13), which is considered to meet the claim limitation of a susceptor partially embedded in an aerosol forming substrate. The aerosol generating substrate comprises an aerosol former (column 5, lines 5-14). Wagner does not explicitly disclose the having two aerosol generating materials and an aerosol former.
Mua teaches an aerosol generating component having a substrate impregnated with two or more aerosol forming materials (abstract). The substrate comprises wood derived fibers [0014], which is considered to meet the claim limitation of a first aerosol generating material. The substrate is impregnated with a flavorant [0011], which is considered to meet the claim limitation of a second aerosol generating material. The aerosol forming materials are glycerol and propylene glycol [0009], which are considered to meet the claim limitation of an aerosol former. Mua additionally teaches that this impregnated substrate allows for better controlled release of aerosol over as the substrate is heated compared to substrates having only aerosol former [0005].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the substrate of Mua as the substrate of Wagner. One would have been motivated to do so since Mua teaches a substrate that allows for better controlled release of aerosol over as the substrate is heated.
Regarding claim 19, the wood fibers of Mua are considered to meet the claim limitation of botanical material.
Regarding claim 21, Mua discloses that the substrate may be impregnated with a tobacco component as a flavorant in some embodiments [0011], indicating that it is tobacco free in other embodiments.
Claim 20 is rejected under 35 U.S.C. 103 as being obvious over Wagner (US 12,514,284) in view of Mua (US 2021/0195938) as applied to claim 18 above, and further in view of Wood (US 267,764).
Regarding claim 20, modified Wagner teaches all the claim limitations as set forth above. Mua additionally teaches that the flavor is a tobacco component [0011]. Modified Wanger does not explicitly disclose the tobacco component being tobacco lamina.
Wood teaches a taking a suitable quantity of leaves of tobacco, which is considered to meet the claim limitation of tobacco lamina, and applied it to a sheet so that the tobacco leaves penetrate the sheet and impart flavor to it (page 1, lines 83-100, page 2, lines 1-6).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the tobacco leaves of Wood as the tobacco component that provides a flavor of modified Wagner. One would have been motivated to do so since Wood teaches that tobacco leaves penetrate into a sheet to impart it with flavor.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the adhesive of Wagner is not a component of the aerosol generating material itself, (b) that the susceptor patches of Wanger are not embedded in the aerosol generating substrate, (c) that the aerosol generating substrate and susceptor patches of Wagner are separately formed, (d) that Ajithkumar does not disclose the limitations of amended claim 18, and (e) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), Wagner discloses that the adhesive is absorbed into the aerosol generating material during the production process and remains in that location when the production is finished (figure 4), indicating that, in the final state, the limitation is met.
Regarding (b), the susceptor patches of Wagner are not relied upon to teach the limitation of embedded. Instead the elongated central strip (figure 1B, reference numeral 13) of the inductively heatable susceptor (column 6, lines 40-48, figure 1B, reference numeral 12) is considered to meet the claim limitation of embedded since it is surrounded and encompassed by the strips of aerosol forming substrate.
Regarding (c), the instant claims are directed to the final form of a composition rather than the method of manufacturing the composition. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
Regarding (d), applicant’s arguments are moot since Ajithkumar is not relied upon in the instant Office action.
Regarding (e), all examined claims, including the examined independent claim, are rejected as set forth above.
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 RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
