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 1-4, 6-9, 11, 14, 16, 18-22, 24-26, and 28 are pending and are subject to this Office Action.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 09/25/2026.
Claim 2 is amended.
Claims 21-22, 24-26 and 28 are withdrawn as being directed to a non-elected invention.
The rejection of claim 2 under 35 U.S.C. 112(b) are withdrawn due to amendments made to the claims.
Response to Arguments
Applicant' s arguments, see pages 6-11, filed 09/25/2026, with respect to the rejection(s) of claims 1-7 and 14-19 under 35 U.S.C. 103, have been fully considered and are not persuasive.
On pages 10-11, the Applicant argues criticality of the claimed range of Ghanouni citing two Examples provided in the Specification. The Applicant further argues that the range provided in Ghanouni is far broader than the claimed range and that there would be no similar motivation in Ghanouni to teach the claimed range since Ghanouni does not teach flavor retention with lower weight percentages of glycerol.
The Examiner respectfully disagrees because the evidence provided regarding criticality of the claimed range is directed to one specific example (Example 2) and does not establish unexpected results over the claimed range. Example 2 teaches the aerosol generating agent at 11%, which is a value within the claimed range, but a single example within the claimed range does not constitute a sufficient number of tests both inside and outside the claimed range to show criticality. Therefore, the arguments regarding unexpected results directed to the entire claimed range are found unpersuasive as they are not commensurate in scope with the claimed invention. If applicant can provide a sufficient showing that establishes criticality and unexpected results for the entire claimed range, the rejection would be overcome.
Furthermore, Ghanouni discloses embodiments comprising smaller ranges of the aerosol generating agent such as an aerosol in an amount of from about 5wt% to about 40wt%, or from about l0wt% to about 35wt%, and about l5wt% glycerol (DWB), where glycerol is the preferable aerosol generating agent ([0156]-[0158]). Ghanouni further discloses the aerosol generating agent anywhere from 5 to 35 wt% ([0056]), and therefore Ghanouni does in fact disclose much smaller ranges closer to the claimed range, and therefore is considered prima facie obvious. Therefore, the arguments are unpersuasive and the rejection stands as provided below.
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) 1-4, 6-9, 11, 14, 16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ghanouni et al. (WO-2020025718-A1, hereinafter referring to the English copy provided by the Examiner).
In regards to claim 1, Ghanouni, directed to an aerosol generating substrate formed from an amorphous material ([0034]), discloses the amorphous material comprising 5-80 wt.% of an aerosol-generating agent ([0044]), a gelling agent (i.e., binder), a flavorant from 0.5 to 60 wt.% ([0022]) and filler ([0060]-[0063]). The range disclosed by the prior art overlaps the claimed ranges of an aerosol-generating agent from about 7 to 13 wt.% and a flavorant from about 35 to about 50wt.%, and are therefore considered prima facie obvious.
In regards to claim 2, Ghanouni discloses the aerosol-generating material according to claim 1, comprising:
5-80 wt.% of an aerosol-generating agent ([0044]), the range disclosed by the prior art overlaps the claimed range of an aerosol-generating agent from about 7 to 13 wt.% and is therefore considered prima facie obvious.
1-60 wt.% of a gelling agent (i.e., binder) ([0011]), the range disclosed by the prior art overlaps the claimed range of from about 1 to about 57wt% binder, and is therefore considered prima facie obvious.
a flavorant from 0.5 to 60 wt.% ([0022]), the range disclosed by the prior art overlaps the claimed range of from about 35 to 50 wt.% flavor, and is therefore considered prima facie obvious.
Filler in an amount of up to 60wt%, anywhere from 1 to 60wt% ([0060];[0158]), the range disclosed by the prior art overlaps the claimed range of from about 1 to about 50wt% filler, and is therefore considered prima facie obvious.
Wherein the weights are calculated on a dry weight basis ([0021]).
In regards to claim 3, Ghanouni discloses the flavorant comprises menthol ([0051]).
In regards to claim 4, Ghanouni discloses the aerosol-generating agent is preferably glycerol ([0156]).
In regards to claim 6, Ghanouni discloses the amorphous material comprising 5-80 wt.% of an aerosol-generating agent ([0012]). The range disclosed by the prior art overlaps the claimed range of an aerosol-generating agent from about 8 to 13 wt.%, and is therefore considered prima facie obvious.
In regards to claim 7, Ghanouni discloses a flavorant from 0.5 to 60 wt.% ([0022]). The range disclosed by the prior art overlaps the claimed range of a flavorant from about 35 to about 45wt.%, and is therefore considered prima facie obvious.
In regards to claims 8-9, Ghanouni discloses the binder can comprise alginates and/or pectins ([0053]-[0054];[0156]), which are non-cellulosic binders (i.e., substantially free of cellulosic binder).
In regards to claim 11, Ghanouni discloses the binder can comprise one or more compounds selected from both cellulosic and non-cellulosic binders ([0053]), therefore it would be obvious to one of ordinary skill in the art that the binder can include both cellulosic and non-cellulosic binders.
In regards to claim 14, Ghanouni discloses the filler can comprise wood pulp ([0062]-[0063]).
In regards to claim 16, Ghanouni discloses the use of calcium cations to cause crosslinking in the gel material (i.e., crosslinking agents) ([0151]).
In regards to claim 18, Ghanouni discloses embodiments wherein the aerosol-generating material is nicotine instead of tobacco (i.e., substantially free from tobacco) ([0037];[0090];[0170]-[0171]).
In regards to claim 19, Ghanouni discloses the aerosol-generating material of claim 1 is an aerosol-generating composition ([0049]).
In regards to claim 20, Ghanouni discloses the composition can be efficiently heated to generate an inhalable aerosol ([0049]) and that the aerosol-generating article (i.e., consumable) comprising the composition may be inserted into the aerosol-generating device ([0090];[0094]).
Conclusion
THIS ACTION IS MADE FINAL. 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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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
