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 .
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.
Claim 24 is 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.
Regarding claim 24, Applicant has recited “…heating of the aerosol-generating substrate according to Test Method A…”; however, to avoid confusion and prevent the scope of the claim from being difficult to understand, specific heating parameters should be explicitly recited in the claim. It is suggested that language which is disclosed in instant published application para. [0061] be incorporated into the claim to provide clear understanding of the metes and bounds of the term “Test Method A”.
Claim Objections
Claim 19 is objected to because of the following informalities:
-in line 4, the word – the – should be inserted in front of the word “binder”.
Appropriate correction is requested.
Claim Rejections - 35 USC § 103
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 16-29 are rejected under 35 U.S.C. 103 as being unpatentable over CN 108783572 (hereinafter referred to as “Liu et al”).
Regarding independent claims 16 and 26, Liu discloses a highly porous sheet for low-temperature (heat-not-burn) cigarettes comprising:
A plant material powder comprising herbal plant powder selected from oregano (see paras. [0011],[0016],[0030]).
An atomizing agent (read: aerosol former) in the form of glycerol and/or propylene glycol at 10-30 wt% (see paras. [0011],[0013]).
An adhesive (read: binder) at 0.5-10 wt% (see paras. [0011],[0014]).
Liu et al discloses that the herbal plant powder is present in an amount of 2-15 wt% (see para. [0011]). Selecting oregano as the sole herbal plant powder yields an oregano particle content of 2-15 wt%, which prima facie obviously overlaps the claimed “at least 2.5 percent by weight of oregano particles on a dry weight basis”.
Regarding the functional limitations of “at least 200 micrograms of ursolic acid…at least 5 micrograms of isothymol...and at least 1.5 micrograms of thymohydroquinone per gram of aerosol-generating substrate”, Liu et al utilizes ground oregano plant material. These chemical constituents are naturally occurring, inherent chemical components of dried oregano leaves. Discovering or reciting the inherent quantitative chemical profile of a known botanical component does not render the composition non-obvious (see MPEP 2112).
Regarding claim 17, the claimed mass ratios (ursolic acid to isothymol > 8:1; ursolic acid to thymohydroquinone > 25:1) represent the naturally occurring constituent distribution within oregano leaves and are therefore inherent properties of the substrate formulation taught by Liu et al.
Regarding claim 18, Liu et al discloses 50-80 wt% tobacco raw material powder (leaves, stem, dust) (see paras. [0011],[0015]). Natural tobacco leaf inherently contains nicotine in concentrations that meet the claimed range of 1 to 20 mg/g of substrate.
Regarding claim 19, Liu et al explicitly discloses an atomizing agent (read: aerosol former) concentration of 10-20 wt% and an adhesive (read: binder) concentration of 0.5-10 wt% (see para. [0011]). These ranges directly overlap the claimed ranges of 5-30 wt% aerosol former and 1-10 wt% binder.
Regarding claim 20, Liu et al explicitly teaches that the adhesive (Read: binder) may be guar gum (see paras. [0014],[0030], Example 3 (0047]).
Regarding claim 21, Liu et al teaches 2-15 wt% herbal powder and 50-80 wt% tobacco powder (see para. [0011]). Selecting 2 wt% oregano powder and 50-80 wt% tobacco powder yields a weight ratio between 2:80 (1:40) and 2:50 (1:25), which is well within the claimed ratio of “no more than 1:4.
Regarding claims 22 and 23, Liu discloses forming the homogenized sheet using a roller pressing/extrusion process (see paras. [0022]-[0023]). Formulations for reconstituted plant sheets in the heat-not-burn art are routinely produced as cast leaf or reconstituted paper sheets. Selecting cast leaf (claim 22) or paper-making processes (claim 23) represents a routine design choice among well-known methods of manufacturing reconstituted plant substrates.
Regarding claims 24, 25 and 28, Liu et al discloses low-temperature cigarettes containing oregano and tobacco sheets that are heated in an inner core heating device at 250-350oC to produce aerosol smoke (see para. [0004],[0049]). Because Liu et al disclose heating a substrate formulation structurally and chemically equivalent to the claimed substrate, heating Liu’s substrate under standard smoking machine conditions will inherently yield an aerosol containing ursolic acid, isothymol, and thymohydroquinone in the claimed per-gram and per-puff thresholds.
Regarding claim 27, Liu et al explicitly discloses a low-temperature cigarette (read: article) used in combination with a needle-type inner core heating device (read: an aerosol-generating device comprising a heating element) (see paras. [0004],[0005],[0049]). Thus, combining the article with a heating device is explicitly taught.
Regarding clam 29, Liu et al explicitly discloses a method of making the tobacco/herbal sheet comprising:
Mixing oregano plant powder, tobacco powder, water, an atomizing agent (glycerol/propylene glycol), and a binder (guar gum/CMC) into a mixture/slurry (see paras. [0019]-[0022]),Examples 1-3).
Rolling or extruding the mixture into a sheet (see paras. [0022]-[0023]); and
Drying the sheet in an adjustable temperature dryer at 105-150oC (see para. [0023]).
Liu et al’s drying temperature range of 105-150oC falls entirely within the claimed drying range of 80-160oC.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIONNE WALLS MAYES whose telephone number is (571)272-5836. The examiner can normally be reached Mondays and Thursdays, 8:00AM - 4:00PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached at 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIONNE W. MAYES/Primary Examiner, Art Unit 1747
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