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 1-7, 10, 14, 23-24, 27-28 and 31 are amended. Claims 8-9, 11-13, 15-22, 25-26, 29 and 32 are cancelled. Claims 31 and 33-35 are withdrawn. Claims 36 and 37 are newly added. Claims 1-7, 10, 14, 23-24, 27-28, and 36-37 are presently examined.
Applicant’s arguments regarding the objection to the drawings have been fully considered and are persuasive. The objection of 6/29/2026 is withdrawn.
Applicant’s arguments regarding the objections to the claims have been fully considered and are persuasive. The objections of 6/29/2026 are withdrawn.
Applicant’s arguments regarding the rejections under 35 USC 102(a)(1) have been fully considered and are persuasive. The rejections of 6/29/2026 are overcome.
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 5 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 5, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of this Office action, the claim will be interpreted as if it required any solvent.
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.
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 1-2, 6-7, 10, 17, 23-24, 27-28 and 36-37 are rejected under 35 U.S.C. 103 as obvious over Ferrie (WO 2020/089077) in view of Woodson (US 8,286,642).
Regarding claims 1, 23 and 36, Ferrie discloses a method for manufacturing an aerosol forming substrate in which ground plant material is combined with an aqueous medium to form a slurry, the slurry is cast on a surface to form a sheet, which is considered to meet the claim limitation of forming a layer, and a flavorant is applied to the sheet to provide a coating (page 10, lines 17-20), indicating that it must be applied after the sheet is formed. The sheet is on a drying belt that dries the slurry by exposure to elevated temperatures (page 11, lines 20-25). The slurry contains a humectant that is a vapor generator (page 6, lines 6-10), which is considered to meet the claim limitation of an aerosol former. The slurry is also provided with a binder (page 11, lines 3-7) that is agar (page 6, lines 18-22), which applicant’s specification discloses is a gelling agent (page 4, lines 26-35). The slurry is formed by mixing the aqueous medium and the ground tobacco (page 15, lines 5-10), indicating that the aqueous medium is a solvent. Ferrie does not explicitly disclose the flavorant being added during heating of the sheet.
Woodson teaches providing an additive to a smoking article (column 2, lines 41-48) in the form of a powder (column 2, lines 49-60) that is applied to reconstituted tobacco material during drying or at other phases of processing (column 3, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the flavorant of Ferrie to the sheet of Ferrie during the drying. One would have been motivated to do so since there is no evidence that the specific time at which the flavorant is added is critical and Woodson teaches adding additives to a tobacco material during drying or at other points during processing. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes. See MPEP § 2144.04 (IV)(C).
Regarding claim 2, Ferrie discloses a method for manufacturing an aerosol forming substrate in which ground plant material is combined with an aqueous medium to form a slurry, the slurry is cast on a surface to form a sheet, which is considered to meet the claim limitation of forming a layer, and a flavorant is applied to the sheet to provide a coating (page 10, lines 17-20), indicating that it must be applied after the sheet is formed. The sheet is on a drying belt that dries the slurry by exposure to elevated temperatures (page 11, lines 20-25). The slurry contains a humectant that is a vapor generator (page 6, lines 6-10), which is considered to meet the claim limitation of an aerosol former. The slurry is also provided with a binder (page 11, lines 3-7) that is agar (page 6, lines 18-22), which applicant’s specification discloses is a gelling agent (page 4, lines 26-35). The slurry is formed by mixing the aqueous medium and the ground tobacco (page 15, lines 5-10), indicating that the aqueous medium is a solvent. Ferrie does not explicitly disclose the flavorant being added during heating of the sheet.
Woodson teaches providing an additive to a smoking article (column 2, lines 41-48) in the form of a powder (column 2, lines 49-60) that is applied to reconstituted tobacco material during drying or at other phases of processing (column 3, lines 31-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the flavorant and humectant of Ferrie to the sheet of Ferrie during the drying. One would have been motivated to do so since there is no evidence that the specific time at which the flavorant is added is critical and Woodson teaches adding additives to a tobacco material during drying or at other points during processing. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes. See MPEP § 2144.04 (IV)(C).
Regarding claim 6, Ferrie discloses that the flavorant is menthol (page 7, lines 4-9), which applicant’s specification discloses is volatile (page 6, lines 24-32).
Regarding claims 7 and 10, Ferrie discloses that the flavorant is menthol (page 7, lines 4-9).
Regarding claims 24 and 37, Ferrie discloses that the binder is hydroxypropyl cellulose (page 6, lines 18-22), which applicant’s specification discloses is a gelling agent (page 4, lines 26-35).
Regarding claim 27, Ferrie discloses that the aerosol forming substrate comprises a filler (column 6, lines 4-5).
Regarding claim 28, Ferrie discloses that the flavorant is provided in the form of a liquid that contains the flavorant and is sprayed onto the flavorant (page 7, lines 10-13).
Claim 3 is rejected under 35 U.S.C. 103 as being obvious over Ferrie (WO 2020/089077) in view of Woodson (US 8,286,642) as applied to claim 2 above, and further in view of Balboni (US 2023/0371578).
Regarding claim 3, modified Ferrie teaches all the claim limitations as set forth above. Modified Ferrie does not explicitly teach mixing the humectant and flavoring.
Balboni teaches making an aerosol generating rode (abstract) in which an additive is added to a sheet material in an efficient and controlled manner [0007] by using an additive dispensing pipe [0005]. The additive includes aerosol generating substances and flavorful substances, which much form a mixture since they form a single additive [0004].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the humectant and flavoring of modified Ferrie using the additive dispensing pipe and additive of Balboni. One would have been motivated to do so since Balboni teaches adding an additive to sheet material in an efficient and controlled manner.
Claim 4 is rejected under 35 U.S.C. 103 as being obvious over Ferrie (WO 2020/089077) in view of Woodson (US 8,286,642) as applied to claim 2 above, and further in view of Balboni (US 2023/0371578), as evidenced by Liu (US 12,433,322).
Regarding claim 4, modified Ferrie teaches all the claim limitations as set forth above. Ferrie additionally discloses that the humectant is propylene glycol (page 6, lines 6-10). Modified Ferrie does not explicitly teach (a) mixing the humectant and flavoring and (b) the propylene glycol dissolving the flavor.
Regarding (a), Balboni teaches making an aerosol generating rode (abstract) in which an additive is added to a sheet material in an efficient and controlled manner [0007] by using an additive dispensing pipe [0005]. The additive includes aerosol generating substances and flavorful substances, which much form a mixture since they form a single additive [0004].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the humectant and flavoring of modified Ferrie using the additive dispensing pipe and additive of Balboni. One would have been motivated to do so since Balboni teaches adding an additive to sheet material in an efficient and controlled manner.
Regarding (b), Liu teaches that propylene glycol dissolves flavors (column 1, lines 23-38), indicating that the flavor would dissolve in the propylene glycol when mixed into the additive of modified Ferrie.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over over Ferrie (WO 2020/089077) in view of Woodson (US 8,286,642) as applied to claim 1 above, and further in view of Houminer (US 4,509,537).
Regarding claim 5, modified Ferrie teaches all the claim limitations as set forth above. Ferrie additionally discloses that the flavorant is provided in the form of a liquid that contains the flavorant and is sprayed onto the flavorant (page 7, lines 10-13). Modified Ferrie does not explicitly teach the liquid being a solvent.
Houminer teaches incorporating a flavorant into a matrix by dissolving it in a solvent and then spraying it onto the matrix so that it is evenly distributed (column 4, lines 16-34).
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 a solvent as the liquid of modified Ferrie. One would have been motivated to do so since Houminer teaches that dissolving a flavorant in a liquid ensures the flavorant is evenly distributed on a matrix.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (WO 2020/089077) in view of Woodson (US 8,286,642) as applied to claim 1 above, and further in view of Rousseau (US 2020/0275688).
Regarding claim 14, modified Ferrie teaches all the claim limitations as set forth above. Modified Ferrie does not explicitly teach the flavorant including a terpene.
Rousseau teaches an aerosol generating material (abstract) that includes a terpene flavorant to improve the sensory reaction to inhaling an aerosol created by the material [0098].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the flavorant of modified Ferrie with the terpene of Rousseau. One would have been motivated to do so since Rousseau teaches that a terpene improves the sensory reaction to inhaling an aerosol created by an aerosol generating material.
Response to Arguments
Regarding the rejections under 35 USC 112(b), applicant’s arguments have been fully considered but they are not persuasive since claim 5 has not been amended.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered and are persuasive. However, upon further consideration, new grounds of rejection relying on Woodson are entered as set forth above.
Conclusion
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
