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, 16, 18-22, 24-26, and 28 are pending and are subject to this Office Action.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-4, 6-9, 11, 16, and 18-20) in the reply filed on 06/15/2026 is acknowledged.
Claims 21-22, 24-26 and 28 are withdrawn as being directed to a non-elected invention.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.
Claim 2 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.
Claim 2 is indefinite for reciting the aerosol-generating material according to claim 1, comprising the same components already recited in claim 1, specifically the weight percents of the aerosol-generating agent and the flavor. It is unclear if the aerosol-generating material further comprises additional aerosol generating agents and flavor or if the claim is redundant as the weight percents of the aerosol-generating agent and flavor are already disclosed in claim 1. For purposes of examination the aerosol-generating material is being treated as only comprising the weight percents disclosed in claim 2.
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
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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