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, 7, 9-11, 13, 15-16, 18-20, 22-23, 25-27, and 29-31 are pending and are subject to this Office Action. This is the first Office Action on the merits of the claims. Claims 20, 22-23, 25-27, and 30-31 are withdrawn.
Election/Restriction
Applicant's election with traverse of Group I (Claims 1-4, 7, 9-11, 13, 15-16, 18-19, and 29) in the reply filed on June 9, 2026 is acknowledged. The traversal is on the ground(s) that combined search and examination of the alleged inventions would not be a serious burden. Specifically, Applicant argues that the Examiner in the international PCT application examined all of the claims as evidenced by the International Search Report/Written Opinion dated October 28, 2022. This is not found persuasive because there is no requirement that the examiner is bound to the opinions or lack thereof of the PCT application and written opinion. Search and examination of the inventions of Groups I-VII would be a serious burden because the inventions are directed to separate categories of invention (e.g. a composition, a method, a system, etc), and the shared technical feature between the inventions does not make a contribution over the prior art as shown the restriction dated April 17, 2026.
The requirement is still deemed proper and is therefore made FINAL.
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 1-4, 7, 9-11, 13, 15-16, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (WO 2020/025735 A1, cited on the IDS dated 1/12/2024).
Regarding Claim 1, Aoun, directed to aerosol generating materials (pg 1, ln 5-9), teaches an aerosol-generating material (pg 7, ln 27 – pg 8, ln 6; The aerosolisable material may consist of an amorphous solid (aerosol-generating material)) comprising:
about 1 to about 50 wt% of one or more cannabinoids (pg 10, ln 13-18, The amorphous solid may comprise between 1-70 wt% of an active substance; and pg 16, ln 26 – pg 17, ln 10; the active substance may comprise one or more constituents, derivatives or extracts of cannabis, such as one or more cannabinoids or terpenes);
about 5 to about 30 wt% aerosol-former material (pg 9, ln 20-27, The amorphous solid may comprise between 5-80 wt% of an aerosol generating agent (aerosol former material) such as propylene glycol or glycerol);
about 1 to about 30 wt% of one of or more terpenes (pg 10, ln 13-18, The amorphous solid may comprise between 1-70 wt% of an active substance; and pg 16, ln 26 – pg 17, ln 10; the active substance may comprise one or more constituents, derivatives or extracts of cannabis, such as one or more cannabinoids or terpenes. There must be embodiments of Aoun including both a cannabinoid and a terpene at a weight percent of at least about 1);
gelling agent (pg 8, ln 22-29; The amorphous solid may comprise between 1-60 wt% of a gelling agent);
wherein the wt% values are calculated on a dry weight basis (pg 8, ln 22 – pg 10, ln 18, All wt% values are calculated on a dry weight basis).
Regarding Claim 2, Aoun teaches the aerosol-generating material of claim 1 comprising about 1 to about 12 wt% of one or more cannabinoids (pg 10, ln 13-18, The amorphous solid may comprise between 1-70 wt% of an active substance; and pg 16, ln 26 – pg 17, ln 10; the active substance may comprise one or more constituents, derivatives or extracts of cannabis, such as one or more cannabinoids or terpenes. There must be embodiments of Aoun including both a cannabinoid and a terpene at a weight percent of at least about 1).
Regarding Claim 3, Aoun teaches the aerosol-generating material of claim 1, comprising about 15 to about 50 wt% of one or more cannabinoids (pg 10, ln 13-18, The amorphous solid may comprise between 1-70 wt% of an active substance; and pg 16, ln 26 – pg 17, ln 10; the active substance may comprise one or more constituents, derivatives or extracts of cannabis, such as one or more cannabinoids or terpenes. There must be embodiments of Aoun including a cannabinoid at a weight percent of at least about 15).
Regarding Claim 4, Aoun teaches the aerosol-generating material of claim 1, comprising about 5 to about 20 wt% aerosol former material (pg 9, ln 20-27, The amorphous solid may comprise between 5-80 wt% of an aerosol generating agent (aerosol former material) such as propylene glycol or glycerol).
Regarding Claim 7, Aoun teaches the aerosol-generating material of claim 1, wherein the gelling agent comprises one or more compounds selected from polysaccharide gelling agents, such as alginate, pectin, starch or a derivative thereof, cellulose or a derivative thereof, pullulan, carrageenan, agar and agarose; gelatin; gums, such as xanthan gum, guar gum and acacia gum; silica or silicone compounds, such as PDMS and sodium silicate; clays, such as kaolin; and polyvinyl alcohol (pg 9, ln 2-5; the gelling agent comprises one or more of alginates, pectins, hydroxyethyl cellulose, hydroxypropyl cellulose, carboxymethylcellulose, pullulan, xanthan gum guar gum, carrageenan, agarose, acacia gum, fumed silica, PDMS, sodium silicate, kaolin and polyvinyl alcohol).
Regarding Claim 9, Aoun teaches the aerosol-generating material of claim 7, wherein the cellulose derivative is selected from hydroxymethyl cellulose, hydroxyethyl cellulose, hydroxypropyl cellulose, carboxymethylcellulose (CMC), hydroxypropyl methylcellulose (HPMC), methyl cellulose, ethyl cellulose, cellulose acetate (CA), cellulose acetate butyrate (CAB), and cellulose acetate propionate (CAP) (pg 9, ln 2-5; the gelling agent comprises one or more of alginates, pectins, hydroxyethyl cellulose, hydroxypropyl cellulose, carboxymethylcellulose, pullulan, xanthan gum guar gum, carrageenan, agarose, acacia gum, fumed silica, PDMS, sodium silicate, kaolin and polyvinyl alcohol).
Regarding Claim 10, Aoun teaches the aerosol-generating material of claim 1, wherein the gelling agent is not crosslinked (pg 9, ln 2-11; the gelling agent comprises one or more of alginates, pectins, hydroxyethyl cellulose, hydroxypropyl cellulose, carboxymethylcellulose, pullulan, xanthan gum guar gum, carrageenan, agarose, acacia gum, fumed silica, PDMS, sodium silicate, kaolin and polyvinyl alcohol; The gelling agent can be crosslinked or not crosslinked).
Regarding Claim 11, Aoun teaches the aerosol-generating material of claim 1. wherein the gelling agent is CMC (pg 9, ln 2-5; the gelling agent comprises one or more of… carboxymethylcellulose).
Regarding Claim 13, Aoun teaches the aerosol-generating material of claim 1, wherein the aerosol-former material comprises glycerol or a combination of glycerol and propylene glycol (pg 9, ln 20-27, The amorphous solid may comprise between 5-80 wt% of an aerosol generating agent (aerosol former material) such as propylene glycol or glycerol).
Regarding Claim 15, Aoun teaches the aerosol-generating material of claim 1, wherein the one or more cannabinoids is cannabidiol (pg 16, ln 26 – pg 17, ln 10; the active substance may comprise one or more constituents, derivatives or extracts of cannabis, such as one or more cannabinoids or terpenes. The cannabinoid may be cannabidiol (CBD)).
Regarding Claim 16, Aoun teaches the aerosol-generating material of claim 1, comprising about 5-25 wt% of one or more terpenes (pg 10, ln 13-18, The amorphous solid may comprise between 1-70 wt% of an active substance; and pg 16, ln 26 – pg 17, ln 10; the active substance may comprise one or more constituents, derivatives or extracts of cannabis, such as one or more cannabinoids or terpenes. There must be embodiments of Aoun including a terpene at a weight percent of at least about 5).
Regarding Claim 29, Aoun teaches the aerosol-generating material of claim 1 further comprising filler (pg 12, ln 5-7; the amorphous solid comprises less than 20wt%, suitably less than l0wt% or less than 5wt% of a filler).
Claims 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun (WO 2020/025735 A1, cited on the IDS dated 1/12/2024) as applied to claim 16, in view of Rousseau (US 2020/0253264 A1).
Regarding Claim 18-19, Aoun does not teach the aerosol-generating material, wherein the one or more terpenes comprise one or more of limonene, pinene, humulene, myrcene, caryophyllene, borneol, phytol, bisabolol, guaiene, carene, guaiol, linalool, terpineol, terpinolene, ocimene and sabinene, wherein the one or more terpenes comprise one or more of limonene and eucalyptol.
Rousseau, directed to aerosol generating materials ([0009]), teaches an aerosol generating material comprising a reconstituted cannabis material ([0009]); and
an aerosol delivery agent, wherein the aerosol delivery agent may comprise one or more terpenes ([0017]),
wherein the one or more terpenes comprise one or more of limonene and eucalyptol ([0017]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the aerosol generating material of Aoun wherein the terpene comprises limonene as taught by Rousseau because Aoun and Rousseau are directed to aerosol generating materials, Aoun does not explicitly list suitable terpenes for its aerosol generating material, Rousseau demonstrates that limonene is a suitable terpene to add to an aerosol generating material (Rousseau, [0017]), and this involves combining prior art elements according to known methods to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN M. MARTIN whose telephone number is (703)756-1270. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PHILIP Y. LOUIE can be reached on (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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/J.M.M./
Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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