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, 13-14, 16-18, 20-21, and 23-27 are pending and subject to this Office Action. Claims 5, 6. 8, 12, 15, 19, and 22 have been cancelled. Claims 23-27 have been withdrawn from consideration.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-4, 7, 9-11, 13-14, 16-18 and 20-21, in the reply filed on 28 July 2026 is acknowledged. The traversal is on the ground(s) that there is no undue burden to examine all of the claims in the application since the PCT application examined all of the claims. . This is not found persuasive because restriction under 371 is not based on search burden but on unity of invention. Group I is drawn to an aerosol generating composition, Group II is drawn to a consumable, and Group III is drawn to a method for preparing a composition. Groups II and III contain the same special feature of an aerosol generating composition as required by Group I but are considered a separate inventions from Group I. For Lack of Unity requirement to be met, the groups must only share a common concept which the prior art, Aoun, et al, teaches. Therefore the groups share a technical features but it is not “special”.
The requirement is still deemed proper and is therefore made FINAL.
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, 7, 9-11, 13-14, 16-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoun, et al (WO2020025730A1).
Regarding claim 1, Aoun teaches an aerosol generating article for an aerosol generating assembly. The aerosol generating article is comprised of a first aerosol generating amorphous solid material and a second aerosol generating material that is different than the first aerosol generating material. (Abstract) The first aerosol-forming composition comprises an amorphous solid and the second aerosol-forming composition is different from the first aerosol-forming composition. (p3 ln 25-28) The amorphous solid may consist essentially of, or consist of a gelling agent, an aerosol generating agent, one or more active substances (such as a tobacco material and/or a nicotine source), water, and optionally a flavor. (p 31 ln24-26) Aoun teaches the active substance may comprise one or more constituents, derivatives or extracts of tobacco, cannabis or another botanical. (p 38 ln 9-10) and that the gelling agent can comprise one or more of an extensive list of possible gelling agents. (p27 ln 12-19) Based on the teachings of Aoun, a person having ordinary skill would consider the first amorphous solid material could contain one of the active substances and gelling agent and the second amorphous solid material could contain a different active substance and gelling agent.
Regarding claim 7, Aoun teaches the gelling agent can be selected from a list of possible gelling agents including: alginates, pectins, starches (and derivatives), celluloses (and 15 derivatives), gums, silica or silicones compounds, clays, polyvinyl alcohol and combinations thereof, etc. (p27 ln 14-19)
Regarding claim 9, Aoun teaches in some cases the material can be cross-linked thus envisaging that the gelling agent can be not crosslinked when not used with a calcium setting agent. (p27 16-23) Thus the use of any of the listed gelling agents that are not combined with a setting agent are considered to be not crosslinked.
Regarding claim 10, Aoun teaches the gelling agent can be carboxymethylcellulose (CMC). (p27 ln 18)
Regarding claim 11, Aoun teaches the aerosol generating agent can comprise one or more compounds selected from a list of possible compounds including glycerol and propylene glycol. (p28 ln 7-8)
Regarding claims 13 and 14, Aoun teaches the active can comprise one or more derivatives or extracts of cannabis (p38 ln 17-18) selected from a list of possible cannabinoids including cannabidiol. (p38-39 ln 25-2)
Regarding claim 16, Aoun teaches the active substance may be selected from nutraceuticals, nootropics, psychoactives and can comprise nicotine, caffeine, taurine, theine, vitamins such as B6 or B12 or C, melatonin, cannabinoids, or constituents, derivatives, or combinations thereof. (p38 ln 5; 7-9)
Regarding claim 17, as discussed in claim 1, Aoun teaches the first aerosol generating substrate comprises a first aerosol forming composition and a second aerosol forming composition where the second aerosol-forming composition is different from the first aerosol-forming composition. (p3 ln 25-28) and would have different actives.
Regarding claim 18, Aoun teaches the amorphous solid can be comprised of two different amorphous substrate materials, as discussed in claim. These materials can be in the form of sheets of materials. (p 7 ln 15-17) and that the sheets may have a thickness of about 0.015mm to about 1.0mm. The sheets may be combined to form an aggregate thickness. (p 26 ln 9-14)
Regarding claim 20, Aoun teaches the first and second sections have different compositions configured to provide different aerosol delivery profiles depending on the heat profiles of the two substances. The prior art teaches that the (aerosol) delivery profile can be tuned depending on the compositions and the heat profile (p4 ln 11-15) Aoun goes on to teach that the different materials may be heated using different heating profiles. (p5 ln 12-14; claims 6 and 8) As such, a person having ordinary skill would recognize that using different compositions for the first and second aerosol generating material and using different heating profiles would allow for the aerosol to be generated at different temperatures.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Aoun, et al (WO2020025730A1) as applied to claim 1 above, and further in view of Zuber, et al (US20180029782A1).
Regarding claim 2, Aoun teaches an aerosol generating article comprised of a first amorphous solid material and a second amorphous solid material as discussed in claim 1. However, Aoun is silent with respect to the inclusion of a third aerosol generating material comprising an active substance and a gelling agent.
Zuber, directed to the design of aerosol generating articles having thermoreversible gel material, teaches a cartridge that contains first and second chambers for holding thermoreversible aerosol generating gel. The prior art teaches the gel composition used in the cartridge includes: an aerosol former [0053], a gelling agent [0054], and an active [0057] similar to the teachings of Aoun.
Zuber teaches the cartridge can have more than two chambers and that it may be desirable to have three or more chambers. The art explicitly teaches the first and second chambers contain a gel and that the gel in each chamber may contain different compositions. [0087-0088] While the teachings of Zuber only require two different compositions, the art teaches “at least two of the chamber(s) having different contents.” [0087] This teaching demonstrates that the art envisages a design where three of more different compositions are used in the cartridge.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Aoun by using two or more additional gel compositions as taught by Zuber because both Aoun and Zuber are directed to devices that use an aerosol generating gel composition, Zuber teaches the use of the multiple materials allows either the user or the manufacturer to produce a range of different cartridges by selectively being able to combine a desired actives and flavors. [0084-0085], and this involves the use of known technique to improve similar products in the same way.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Aoun, et al (WO2020025730A1).
Regarding claim 3 and 4, as discussed in claim 1, Aoun teaches a first aerosol generating material and a second, different aerosol generating material. (p3 ln 25-28) The prior art teaches the composition of the two materials can both be that of amorphous solids (p5 ln 28-29) and that amorphous solids comprise:
active substance from about 1 wt% to about 70 wt% (p28-29 ln 30-1)
aerosol generating agent from about 5 wt% to about 80 wt% (p28 ln 1-3)
gelling agent from about 1 wt% to about 60 wt% (p27 ln 1-3)
filler that can range from 1 wt% to 60 wt% (p30 ln 18-20) or no filler (p30 ln 24)
The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Aoun, et al (WO2020025730A1) as applied to claim 1 above, and further in view of Arndt, et al (WO2021078683A1).
Regarding claim 21, Aoun teaches the aerosol forming material may comprise an amorphous solid in an amount from 50wt% to about 100wt%. (p3 ln 18-21)
Aoun teaches that the second amorphous solid may be a shredded sheet of amorphous solid and, in some cases, this may be disposed inside the tube of the tubular substrate (first amorphous solid). (p5 ln 1-3) Aoun teaches the first substrate gel sheet is used to circumscribe the second shredded (and other aerosol generating materials) for use. Aoun is silent with respect to all the amorphous solid materials being shredded materials.
Arndt, directed to the substrate material, teaches a substrate composition that comprises a mixture of a binder, an aerosol forming material and an active (tobacco) (p2 ln 12—15) (p58 table 1). Arndt teaches the article can comprise a plug of aerosol generating material that is formed from a plurality of strands of material. (p 32 ln 2-3; 14-15) Arndt teaches that the substrate can be formed from multiple plugs of the material including a first plug having a first homogenized plant material, a second plug having a second homogenized plant material. (p 32 ln 16-18) The prior art also envisages a configuration that includes a third plug of aerosol generating material. The art goes on to teach “When two or more plugs are provided, the homogenized plant material may be provided in the same form in each plug or in a different form in each plug, that is, gathered or shredded.” (p33 ln 17-19) Thus Arndt teaches a substrate material comprising three differing shredded aerosol generating materials.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Aoun by using two or more additional gel compositions as taught by Arndt because both Aoun and Arndt are directed to aerosol generating gel composition, Arndt teaches the use of multiple shredded materials (plugs) allows for different levels of flavor and active in each plug. (p32 ln 18-20; p33 ln 14-17), and this involves the use of known technique to improve similar products in the same way.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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