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 .
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US 2016/0295926 A1) in view of Robinson et al. (US 2010/0200006 A1).
Regarding claim 1, Zuber teaches:
an aerosol generating article (aerosol-generating article 5000) (¶ [0066]);
an aerosol generating rod comprising a sheet of a first non-tobacco material (aerosol-generating rod comprising a gathered sheet of non-tobacco material circumscribed by a wrapper) (¶ [0038]);
to which an aerosol generating material is applied on at least one surface (aerosol-former in a liquid formulation coated onto the surface of a substrate) (¶ [0013]);
a cooling section located downstream of the aerosol generating rod and configured to cool aerosols generated from the aerosol generating rod (aerosol-cooling element 5040 located downstream of aerosol-forming substrate 5020, where volatile substances released from the aerosol-forming substrate pass along aerosol-cooling element 5040 and may cool within aerosol-cooling element 5040 to form an aerosol) (¶ [0066]); and
a filtering section located downstream of the cooling section (mouthpiece 5050 located downstream of aerosol-cooling element 5040) (¶ [0066]).
Zuber does not expressly teach a liquid containing a tobacco component is additionally applied to the sheet of the first non-tobacco material.
Robinson is in the same field of endeavor as Zuber because both references are directed to aerosol-generating articles in which liquid aerosol-forming compositions are carried by non-tobacco sheets or sorbent substrates to generate an inhalable aerosol.
Robinson supplements Zuber by teaching a liquid containing a tobacco component is additionally applied (a gathered sheet of carbon paper saturated with a liquid mixture comprising glycerin, tobacco extract, and flavoring agent) (¶ [0103]).
Zuber expressly teaches that the liquid formulation carried by its sorbent substrate may further comprise a flavorant (¶ [0013]). Robinson’s tobacco-extract-containing liquid is compatible with this arrangement because Robinson teaches retaining glycerin and tobacco extract together in a gathered non-tobacco carbon-paper sheet comprising carbon particles and wood pulp or flax fiber (¶ [0103]). Thus, neither reference teaches away from carrying a tobacco-derived liquid on a non-tobacco sheet.
Because claim 1 is directed to an article, the recitations that the aerosol generating material “is applied” and the liquid containing a tobacco component “is additionally applied” do not require the prior art to employ the same application sequence absent a resulting structural distinction in the claimed article.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to additionally incorporate Robinson’s tobacco-extract-containing liquid into Zuber’s non-tobacco sorbent sheet to provide tobacco-derived flavor or sensory components. Zuber expressly permits an additional flavorant in the liquid formulation carried by the sorbent substrate, and Robinson teaches tobacco extract as a suitable component of a glycerin-containing liquid retained by a non-tobacco paper sheet (Zuber ¶ [0013]; Robinson ¶ [0103]). The modification would predictably retain Zuber’s non-tobacco sheet structure while providing the sheet with aerosol-forming material and a tobacco-component-containing liquid.
Regarding claim 3, Zuber teaches wherein the sheet of the first non-tobacco material is a material other than a tobacco material, and comprises a polymer material or a cellulose material capable of absorbing the aerosol generating material (sorbent substrate comprising a sheet of cellulosic-based material, such as paper, onto which the nicotine salt and aerosol-former may be coated or absorbed) (¶ [0014]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US 2016/0295926 A1) in view of Robinson et al. (US 2010/0200006 A1), and further in view of Young et al. (US 5,715,844).
Regarding claim 2, Zuber in view of Robinson teaches the aerosol generating article of claim 1, as set forth above.
Zuber in view of Robinson does not expressly teach wherein the liquid containing the tobacco component is uniformly applied according to the entire area of the one surface on which the aerosol generating material is applied.
Young is in the same field of endeavor as Zuber and Robinson because Young is directed to tobacco materials for smoking articles, including materials incorporating aerosol precursor materials and tobacco extract.
Young supplements Zuber and Robinson by teaching wherein the liquid containing the tobacco component is uniformly applied according to the entire area of the one surface on which the aerosol generating material is applied (aqueous tobacco extract uniformly applied to pulp in sheet-like form using spray nozzles, sizing rollers, a wick applicator, or other means) (col. 8, l. 7).
Because claim 2 is directed to an article, the recitation that the liquid containing the tobacco component “is uniformly applied” is treated as product-by-process language to the extent it recites the act of applying. However, the resulting uniform distribution over the sheet surface is treated as a structural/distributional limitation.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zuber’s aerosol-generating rod, as modified by Robinson, by uniformly applying the tobacco-extract-containing liquid to the non-tobacco sheet surface, because Young teaches uniformly applying aqueous tobacco extract to a sheet-like substrate using conventional application techniques (Young col. 7, l. 66–col. 8, l. 7). The modification would predictably provide even distribution of the tobacco-component liquid over the aerosol-generating material-bearing sheet.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US 2016/0295926 A1) in view of Robinson et al. (US 2010/0200006 A1), and further in view of Ghanouni et al. (US 2021/0298347 A1).
Regarding claim 4, Zuber in view of Robinson teaches the aerosol generating article of claim 1, as set forth above.
Zuber in view of Robinson does not expressly teach wherein the aerosol generating rod comprises about 40 wt% to about 90 wt% of the aerosol generating material in dry weight basis of the aerosol generating rod.
Ghanouni is in the same field of endeavor as Zuber and Robinson because Ghanouni is directed to aerosol-generating articles and aerosol-generating materials for generating an inhalable aerosol by heating rather than burning.
Ghanouni supplements Zuber and Robinson by teaching wherein the aerosol generating rod comprises about 40 wt% to about 90 wt% of the aerosol generating material in dry weight basis of the aerosol generating rod (amorphous solid comprising aerosol generating agent, preferably glycerol, in an amount from 15 wt% to 75 wt% on a dry weight basis, which overlaps the claimed range at 40 wt% to 75 wt%) (¶ [0163]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Ghanouni’s overlapping amount of aerosol-generating agent in Zuber’s aerosol-generating rod as modified by Robinson, because Ghanouni teaches that such aerosol-generating-agent content provides aerosol generation from an amorphous solid material upon heating (¶ [0163]). The claimed range overlaps the range taught by Ghanouni, and the modification would predictably provide a sufficient amount of aerosol-generating material for aerosol formation.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US 2016/0295926 A1) in view of Robinson et al. (US 2010/0200006 A1), and further in view of Sun et al. (US 2016/0157517 A1).
Regarding claim 5, Zuber in view of Robinson teaches the aerosol generating article of claim 1, as set forth above.
Zuber in view of Robinson does not expressly teach wherein the liquid containing the tobacco component comprises a liquid in which tobacco granules or tobacco fine particles are mixed with a liquid binder, and the tobacco granules or the tobacco fine particles have a size of about 10 µm to about 50 µm.
Sun is reasonably pertinent to Zuber and Robinson because Sun teaches tobacco-particle/binder compositions for delivering tobacco-derived sensory components to a user.
Sun supplements Zuber and Robinson by teaching the liquid containing the tobacco component comprises a liquid in which tobacco granules or tobacco fine particles are mixed with a liquid binder (tobacco particles premixed with a coating solution or suspension including binder dissolved or suspended in a solvent or suspension fluid) (¶ [0052]).
Sun further teaches the tobacco granules or the tobacco fine particles have a size of about 10 µm to about 50 µm (tobacco particles having an average diameter between 10 micrometers and 40 micrometers) (¶ [0033]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Sun’s tobacco particles mixed with binder in the tobacco-component liquid applied to Zuber’s non-tobacco sheet as modified by Robinson, because Sun teaches tobacco particles and binder compositions suitable for providing tobacco flavor and sensory characteristics in tobacco-containing consumer products (¶ [0029]). The modification would predictably provide the aerosol-generating article with tobacco-derived flavor or sensory components using known tobacco particles and binder materials.
Regarding claim 6, Sun teaches wherein the liquid binder comprises at least one of: at least one binder selected from the group consisting of gum, hydroxypropyl methylcellulose (HPMC), and starch; water; and ethanol (binders including hydroxypropyl methylcellulose, starch and modified starches, gum acacia, guar gum, xanthan, and other gums) (¶ [0031]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use Sun’s known binder materials, including HPMC, starch, and gums, in the tobacco-component liquid applied to Zuber’s non-tobacco sheet as modified by Robinson, because Sun teaches those binders as suitable for forming tobacco-particle-containing layers and coatings (¶ [0031]). The modification would predictably bind and carry the tobacco particles in the applied tobacco-component liquid.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zuber et al. (US 2016/0295926 A1) in view of Robinson et al. (US 2010/0200006 A1), and further in view of Metrangolo et al. (US 2015/0107611 A1).
Regarding claim 7, Zuber in view of Robinson teaches the aerosol generating article of claim 1, as set forth above.
Zuber teaches wherein the aerosol generating rod further comprises a sheet of a second non-tobacco material (at least one further sheet of material gathered together with the sheet of non-tobacco material) (¶ [0016]).
Zuber in view of Robinson does not expressly teach to which only an aerosol generating material is applied on at least one surface of the sheet of the second non-tobacco material.
Metrangolo is in the same field of endeavor as Zuber and Robinson because Metrangolo is directed to aerosol-generating rods and aerosol-generating articles formed from sheets for generating an inhalable aerosol.
Metrangolo supplements Zuber and Robinson by teaching a sheet of a second non-tobacco material to which an aerosol generating material is applied on at least one surface (second sheet of non-tobacco material comprising an aerosol-former to dilute the aerosol evolved from the first sheet or to modify the strength or flavor of the aerosol) (¶ [0028]).
Because claim 7 is directed to an article, the recitation that the aerosol generating material “is applied” is treated as product-by-process language to the extent it recites the act of applying. However, the resulting second non-tobacco sheet having only aerosol-generating material as the applied material is treated as a structural limitation.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Zuber’s aerosol-generating rod, as modified by Robinson, to include Metrangolo’s second non-tobacco sheet comprising an aerosol-former, because Metrangolo teaches using a second non-tobacco sheet comprising an aerosol-former to dilute or modify the aerosol evolved from the first sheet (¶ [0028]). The modification would predictably provide an additional aerosol-former-bearing non-tobacco sheet while keeping the tobacco-component liquid on the first non-tobacco sheet.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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