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 1-7, 10, 14-15, and 18-21 are pending and are subject to this Office Action.
Election/Restrictions
Applicant’s election with traverse of Group I (claims 1-7, 10, and 18-21) in the reply
filed on 06/08/026 is acknowledged. The traversal is on the grounds that the prior art does not disclose or suggest the features of claim 13 which have incorporated in claim 1. The Examiner respectfully disagrees. The prior art teaches the vaporizable material can be included in the tobacco substrate, the substrate by itself or additionally within the filter segments ([0042]) and can be included in substrates without tobacco ([0067]) (i.e., the tobacco and the vaporizable material can be arranged in two distinct parts of the consumable article), and therefore does indeed teach the tobacco and the vaporizable material can be located within distinct parts of the consumable and the arguments are therefore unpersuasive.
Claims 14-15 are withdrawn as being directed to a non-elected invention.
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) 1-7, 10, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Frauendorfer et al. (WO2014102070A1, as cited in the IDS dated 01/19/2024, hereinafter referring to the copy provided by the examiner) and further in view of Dobberstein (US-4612942-A, as cited in the IDS dated 01/19/2024).
In regards to claim 1, Frauendorfer directed to flavor precursors used in smoking compositions and smoking articles (abstract) discloses a smoking article ([0041]) comprising:
Tobacco ([0036] and [0040]-[0041]) and
A vaporizable material comprising a flavor compound conjugated to any suitable reducing sugar such as any suitable monosaccharide or polysaccharide or a derivative thereof (i.e., bonded to a retaining substrate such as a carbohydrate) ([0022]). The Examiner notes that the combination of the substrate and the flavor compound forms the “proflavor molecule”.
The flavoring compound being releasable from the retaining substrate when the smoking article is used in an aerosol-generating device to release the flavor compound from the substrate during heating/combustion ([0005] and [0041]),
Wherein the vaporizable material can be included in the tobacco substrate, the substrate by itself or additionally within the filter segments ([0042]) and can be included in substrates without tobacco ([0067]),
And wherein the proflavor molecule is incorporated in a carrier matrix including a solid carrier like tobacco ([0041]) or a liquid carrier including water or alcohols ([0043]).
While Frauendorfer does not explicitly disclose the tobacco material and the vaporizable material are in two distinct parts of the consumable article, since Frauendorfer teaches the vaporizable material can additionally be located in the filter elements ([0042]), it would be obvious to one of ordinary skill in the art that Frauendorfer discloses at least one vaporizable material separate from the tobacco material.
Alternatively, Dobberstein, directed to a smoking composition (i.e., vaporizable material) of a consumable article (column 6, lines 11-12) comprising a proflavor molecule, preferably a diterpene glycoside (i.e., a flavor compound bonded to a retaining substrate) (column 6,lines 1-5).
Dobberstein further discloses the article comprising tobacco, which can be distinct from the proflavor molecule, in that the proflavor molecule can be located in the filter and/or the wrapper of the article (column 6, lines 32-36).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the location of the proflavor molecule of Frauendorfer by making the proflavor molecule and the tobacco arranged in two distinct parts of the consumable, as taught by Dobberstein, because both are directed to flavor compounds of consumable articles, Dobberstein teaches it is known in the art to have a flavor compound separate from the tobacco portion of the consumable (column 6, lines 32-36), and this merely involves applying a known technique of having a proflavor molecule separate from the tobacco portion of a similar consumable to yield predictable results.
In regards to claim 2, Frauendorfer discloses the retaining substrate includes glucose ([0023]).
In regards to claim 3, Frauendorfer discloses the flavoring compound and the retaining substrate are linked through a glycosidic bond to form a glucoside structure ([0022]).
In regards to claim 4, Frauendorfer discloses several different types of flavorings included in the flavoring compound ([0037]), but does not explicitly disclose the flavoring compound is chosen from a group of aliphatic and aromatic alcohols, carboxylic acids, terpenes, aldehydes, ketones, sulphurous compounds, pyrazines, esters, or a mixture thereof.
Dobberstein discloses the flavor molecule can include diterpene glycoside (i.e., a type of a terpene) which can modify or enhance the flavor of the smoking composition (column 6, lines 4-6).
Dobberstein further discloses other flavor compounds include easters, organic acids, and other enhancers or modifiers known in the art (column 5, lines 25-36).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the flavoring compound of Frauendorfer by making the flavoring molecule include a terpene, as taught by Dobberstein, because both are directed to flavor compounds of consumable articles, Dobberstein teaches a terpene, such as diterpene glycoside, can enhance the flavor of the smoking composition (column 5, lines 25-36), and this merely involves applying a known flavoring compound of a similar vaporizable material to yield predictable results.
In regards to claims 5-6, Frauendorfer does not explicitly disclose the flavoring compound is further releasable when contacted by a component present in saliva such as esterase, amylases, lipases, proteases, lipid oxidation enzymes, carbonic anhydrase, lysozyme or mixtures thereof, however, Frauendorfer does disclose a compositionally equivalent flavoring compound as claimed. Therefore, it follows that the flavoring compound of the prior art will function in a similar manner as the claimed flavoring compound and be releasable when contacted with saliva or an endogenous enzyme in salvia, absent evidence to the contrary.
In regards to claim 7, Frauendorfer discloses the flavor compound is released to its surrounding environment in a controlled manner and is released upon heating (i.e., proflavor molecule/released flavoring compound is transported by aerosol generated during use of aerosol generating device) ([0035]-[0036] and [0041]).
In regards to claim 10, Frauendorfer discloses several different types of flavorings included in the flavoring compound but does not explicitly disclose the flavoring compound is a flavor present in tobacco.
Dobberstein discloses the flavor molecule can include other flavorings known in the art such as tobacco extract (i.e., flavor present in tobacco) (column 7, lines 3-20).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the flavoring compound of Frauendorfer by making the flavoring molecule include a tobacco flavoring, as taught by Dobberstein, because both are directed to flavor compounds of consumable articles, Dobberstein teaches it is known in the art to use tobacco flavorings such as tobacco extract (column 7, lines 3-20), and this merely involves applying a known flavoring compound of a similar vaporizable material to yield predictable results.
In regards to claim 18, Frauendorfer discloses the consumable article comprising a filter portion ([0042]).
In regards to claim 19, Modified Frauendorfer does not explicitly disclose the carrier matrix arranged between a substrate portion and the filter portion, however Frauendorfer teaches the vaporizable material can additionally be located in the filter elements and teaches the filter can be a multi-filter comprising connected or unconnected filter segments ([0042]) therefore, it would be obvious to one of ordinary skill in the art that Frauendorfer could teach at least one of the carrier matrix comprising the flavoring compound located in a connected or unconnected filter element between a substrate and a terminal filter.
Furthermore, Modified Frauendorfer discloses an embodiment wherein the carrier matrix can be added “by any manner known to those skilled in the art of flavoring filter means” including but not limited to incorporation the flavoring compound being added in between layers of a filter (column 6, lines 26-44). Therefore, it would be obvious to one of ordinary skill in the art that the modified flavoring compound would be between at least part of a filter and the substrate.
In regards to claim 20, Frauendorfer discloses the carrier matrix is a liquid carrier ([0043]).
In regards to claim 21, Frauendorfer discloses the liquid carrier can be water ([0043]).
Conclusion
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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