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, 14-15, and 20-21 are pending and are subject to this Office Action.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 08/14/2026.
Claims 1, 5, and 6 are amended.
Claims 14-15 are withdrawn for being directed to a non-elected group.
Claims 8-13 and 16-19 are cancelled.
Response to Arguments
Applicant' s arguments, see pages 5-6, filed 08/14/2026, with respect to the rejection(s) of claims 1-7, 10, and 14-21 under 35 U.S.C. 103, have been fully considered and are persuasive. The amendment overcomes the prior art rejection as previously presented, however upon further consideration of the prior art, the examiner finds that a different interpretation of the prior art of record reads on the amended claim.
The Examiner further notes that regarding Figure 3, which supports the amendment of the tobacco portion and the flavor portion being in two distinct portions, clarification was requested during the interview on 08/06/2026 because the filter portion 122 in white appears to comprise the flavoring portion 126. It is unclear whether Figure 3 is showing the flavoring portion is actually located in the filter portion or if the flavoring portion is located in between two separate filter portions. The flavoring portion as claimed can still be located between a filter and the substrate portion, while still within an additional filter because the filter section may be a single or multicomponent filter with two or more connected or unconnected segments. The flavor may be in one or more of the segments, as taught by Frauendorfer [0042]. Thus you can have one filter segment that is the claimed filter portion, then a second that is considered a flavoring portion. There is nothing in the claims that requires the flavoring portion to not comprise a filter material and nothing that excludes the claim from having more than one filter section.
A modified rejection based on the amendments is provided below.
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 and 20-21 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:
A substrate portion 106 comprising tobacco ([0036];[0040]-[0041];[0061]-[0065]);
A vaporizable material (i.e., flavoring portion) 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”;
And a filter portion ([0042]),
Wherein the flavoring compound is 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]).
Frauendorfer does not explicitly disclose the tobacco material and the vaporizable material are in two distinct parts of the consumable article (I) and the flavoring portion is arranged between the substrate portion and the filter portion (II).
However, Frauendorfer teaches the vaporizable material can additionally be located in the filter portion and further teaches the filter portion may be a single segment or a multi-component filter comprising two or more connected/unconnected filter segments, wherein each filter segment may comprise the flavoring portion ([0042]), therefore 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 (i.e., two distinct parts of the consumable) (I) and further discloses, in embodiments with a multi-component filter, the filter flavor portion can be arranged between the substrate portion and an additional filter portion downstream of a first filter (i.e., a filter portion) (II), and is thus considered prima facie obvious.
In regards to (I):
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 (II):
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 further 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 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 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELEINE PAULINA DELACRUZ whose telephone number is (703)756-4544. The examiner can normally be reached Monday - Friday 8-5.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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