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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-7, 10, 14, 16-17, 23-24 and 27 in the reply filed on 6/10/2026 is acknowledged. The traversal is on the ground(s) that there is no burden to examiner all groups together. This is not found persuasive because burden is not a consideration under unity of invention practice.
The requirement is still deemed proper and is therefore made FINAL. Claims 30-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/10/2026.
Drawings
The drawings are objected to because they do not use the abbreviation “FIG.” as required by 37 CFR 1.84(u)(1) when multiple views are present. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 3-7, 10, 14, 16-17, 23-24 and 27-28 are objected to because of the following informalities: The claims do not begin with the definite article “The.” Appropriate correction is required.
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.
Claims 5 and 23-24 are 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.
Regarding claim 23, 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 specific compounds listed in each “such as” limitation will not be considered to affect claim scope. Claim 24 is indefinite by dependence.
Regarding claim 24, 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 only that the gelling agent be a cellulose derivative.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 6-7, 10, 17, 23-24 and 27-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferrie (WO 2020/089077).
Regarding claims 1 and 23, 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). The sheet is a drying belt that dries the slurry by exposure to elevated temperatures (page 11, lines 20-25), indicating that the flavorant must be applied either during or after drying since drying begins when the sheet is formed. 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.
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 claim 17, Ferrie discloses that the flavorant is applied after the sheet is dried (page 12, lines 9-10).
Regarding claim 24, 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 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adams (US 5,692,526).
Regarding claim 2, Adams discloses a cigarette comprising a tobacco web (abstract) that is formed using a papermaking process in which tobacco fiber is combined with pectin, which applicant’s specification discloses is a gelling agent (page 4, lines 26-35) in a slurry that is then wet-laid, indicating that the slurry is an aqueous slurry, and dried using a Yankee dryer (column 9, lines 40-67, column 10, lines 1-8). Applicant’s specification discloses that water is a solvent (page 5, line 8). The wet-laid slurry forms a base web (column 9, lines 40-67, column 10, lines 1-8), which is considered to meet the claim limitation of a layer. A humectant that acts as an aerosol precursor is added online to the base web (column 10, lines 25-34). Tobacco flavor material is also applied to the base web by spraying (column 10, lines 25-34).
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 and 16 are rejected under 35 U.S.C. 103 as being obvious over De Palo (US 2024/0306698) in view of Cantieri (US 2023/0354881).
Regarding claims 1 and 16, De Palo discloses forming a rod of aerosol forming substrate [0287] by mixing guar gum binder, which applicant’s specification discloses is a gelling agent (page 4, lines 26-35), glycerin aerosol former [0287], finely shredded tobacco powder [0289], and water, which is considered to meet the claim limitation of a solvent, to form a slurry [0290]. The slurry is then cast onto a conveyor belt [0292], which would evidently form a layer, and dried [0293]. The material contains flavorants as well [0092]. De Palo does not explicitly disclose adding the flavorants during the drying step.
Cantieri teaches way of obtaining favorable distribution of substances within a rod [0004] of an aerosol generating article [0003] in which an additive is added to a filling material [0046] in a heating region where the filling material is being actively heated so that the viscosity of the additive is reduced to increase distribution of the additive over the filling material [0047]. The additive is a flavorant [0066].
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 De Palo during the drying of De Palo. One would have been motivated to do so since Cantieri teaches that adding a flavorant additive to a filling material while being heated decreases the viscosity of the additive so that it is better distributed in the filling material.
Claim 3 is rejected under 35 U.S.C. 103 as being obvious over Adams (US 5,692,526) in view of Balboni (US 2023/0371578).
Regarding claim 3, Adams discloses all the claim limitations as set forth above. Adams does not explicitly disclose 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 Adams 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 Adams (US 5,692,526) in view of Balboni (US 2023/0371578), as evidenced by Liu (US 12,433,322).
Regarding claim 4, Adams discloses all the claim limitations as set forth above. Adams additionally discloses that the humectant is propylene glycol (column 10, lines 25-34). Adams does not explicitly disclose (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 Adams 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 Adams.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ferrie (WO 2020/089077) in view of Houminer (US 4,509,537).
Regarding claim 5, Ferrie discloses 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). Ferrie does not explicitly disclose 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 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 Rousseau (US 2020/0275688).
Regarding claim 14, Ferrie discloses all the claim limitations as set forth above. Ferrie does not explicitly disclose 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 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.
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
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