DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to applicant’s election filed August 10, 2026. Claims 16-30 are pending.
Election/Restrictions
Applicant's election with traverse of claims 16-29 in the reply filed on August 10, 2026 is acknowledged. The traversal is on the ground(s) that the product and process claims are therefore technically linked by the same particulate material features and by the formation of a solid substrate. This is not found persuasive because the restriction was made under 371 practice wherein the technical feature not being patentable over the prior art breaks the unity of invention. Though SCHMIDT was relied upon for the restriction/election requirement as cited below DEFOREL also renders the instant application non-patentable.
It is noted that DEFOREL (made of record on applicant’s information disclosure statement) discloses the subject matter of claim 30, the process of mixing particulate matter in an aqueous solution, casting the resultant slurry, and drying it (See example 1 beginning in ¶195).
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
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 16-29 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200100538 A1 (hereinafter DEFOREL) as evidenced by "Cellulose fibres, nanofibrils and microfibrils: The morphological sequence of MFC components from a plant physiology and fibre technology point of view" (hereinafter CHINGA-CARRASCO). Both of these references were made of record on applicant’s information disclosure statement filed February 8, 2024.
Regarding claim 1, DEFOREL discloses a sheet including cellulosic material and nicotine sheets (abstract) for use in aerosol generating rods (¶12). DEFOREL discloses a first particulate material (cellulose powder, ¶4, ¶54); and a second particulate material (cellulosic material and fibers ¶4, ¶53). DEFOREL further discloses wherein the aerosol-forming substrate is a solid unitary body (Fig. 2, aerosol forming substrate 1020, ¶211-¶212. This is one example, however, DEFOREL teaches through examples several other options of particulate materials. In the example provided in table 1 the average particle size of the cellulose powder is 20 microns (table 1, ¶195) and is added at 43.1 percent. Another particulate (sorbitol) is added at 28.7 percent.
Regarding the limitation, the first particulate material being formed from particles having a D50 size of between 2 micrometres and 20 micrometres, and the second particulate material being formed from particles having a D50 size of between 50 micrometres and 80 micrometres, this is considered to be an obvious range of two particulates incorporated in an aerosol forming substrate. As explained above, DEFOREL discloses that two cellulose types (a material and a powder) are combined (¶53-¶54). DEFOREL discloses that the cellulose powder (the first particulate material) has an average particle size of less than about 60 microns (¶54). In the example provided in table 1 the average particle size of the cellulose powder is 20 microns (table 1, ¶195). This is within the range of between 2 micrometers and 20 micrometers. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). DEFOREL discloses that the cellulose powder is advantageously added to the total cellulose material because the particle size of less than 60 microns in the powder may facilitate with formation of the sheet (¶54).
As evidenced by CHINGA-CARRASCO a person of ordinary skill in the art knows that cellulose fibres (the second particulate material) may have a diameter of about 10-50 micrometers and a length of about 1-3 millimeters (see for example CHINGA-CARRASCO:page 2, first paragraph and Table 1) and that fibrillar fines, microfines and microfibrillar cellulose have particles that pass a 75 µm diameter round hole (see for example CHINGA-CARRASCO: page 4, left column, first paragraph). Therefore, the second material, also cellulose but in fiber form, has a range that overlaps with the second claimed particle range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 17, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches wherein a ratio of a mass of the first particulate material to a mass of the second particulate material in the aerosol-forming substrate is no more than 1:2 (¶53). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Here, depending on what is called the “first” and “second” the ratios can be inverted. DEFOREL discloses several ratios that are the different materials, and therefore particle sizes. DEFOREL discloses that the value ratios of particulate material needs to be optimized to improve formation of the sheet (¶54). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to move the range as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A). A person of ordinary skill in the art would have optimized the ranges and ratios of the particulate components to improve formation of the sheet (¶54), control formation of formaldehyde (¶76), or other properties such as sugar in the sheet.
Regarding claim 18, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches wherein the first particulate material is formed from particles having a D50 size of 10 micrometres, and the second particulate material is formed from particles having a D50 size of 59 micrometres for the same reasons given in the rejection of claim 16. Further, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 19, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches wherein the first particulate material is formed from particles having a D95 size of between 10 micrometres and 60 micrometres, and the second particulate material is formed from particles having a D95 size of between 80 micrometres and 130 micrometres for the same reasons given in the rejection of claim 16 and 18.
Regarding claim 20, DEFOREL teaches the aerosol-forming substrate according to claim 19 as discussed above. DEFOREL further teaches wherein the first particulate material is formed from particles having a D95 size of 33 micrometres, and the second particulate material is formed from particles having a D95 size of 116 micrometres for the same reasons given in the rejection of claim 16 and 18.
Regarding claim 21, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches wherein the first particulate material is formed from particles having a diameter of between 5 micrometres and 40 micrometres, and the second particulate material is formed from particles having a diameter of between 50 micrometres and 250 micrometres. DEFOREL teaches that the first particulate is a powder with a micron size of less than 50 microns. Micron and micrometre are synonyms. The second particulate material is not a powder and therefore has a larger micron size. Since the materials are the same, cellulosic material, and for the reasons stated in the rejection of claims 16 and 18 this claim is rejected.
Regarding claim 22, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches wherein the first particulate material and the second particulate material are formed from the same material. DEFOREL teaches the use of cellulosic material and cellulosic powder. These are considered to be the same material in light of the instant specification.
Regarding claim 23, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further discloses at least one of the first particulate material and the second particulate material comprise one or more of cellulose and microcrystalline cellulose (MCC). DEFOREL discloses the use of cellulose material and cellulose powder. This reads upon the claimed recitations of “one or more” where the recitation of “or” requires only one of the listed materials to be present.
Regarding claim 24, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further discloses comprising a binder (¶109).
Regarding claim 25, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further discloses comprising one or more of nicotine (¶13), lactic acid (¶14), and sucrose (¶68).
Regarding claim 26, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further discloses cellulose strengthening fibres (Example in table 1, ¶195).
Regarding the limitation, wherein the cellulose strengthening fibres have a D50 size of between 0.8 millimetres and 1.5 millimetres, this is considered to be a recitation of a property which is not a patentable distinction. This is rejected for the same reasons as the rejection of claim 16.
Regarding claim 27, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches wherein a ratio of a mass of the first particulate material to a mass of the second particulate material in the aerosol-forming substrate is at least 1:5. (¶53). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Here, depending on what is called the “first” and “second” the ratios can be inverted. DEFOREL discloses several ratios that are the different materials, and therefore particle sizes. DEFOREL discloses that the value ratios of particulate material needs to be optimized to improve formation of the sheet (¶54). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to move the range as a matter of routine optimization since it has been held that "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A). A person of ordinary skill in the art would have optimized the ranges and ratios of the particulate components to improve formation of the sheet (¶54), control formation of formaldehyde (¶76), or other properties such as sugar in the sheet.
Regarding claim 28, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches the aerosol- forming substrate does not comprise tobacco (¶50).
Regarding claim 29, DEFOREL teaches the aerosol-forming substrate according to claim 16 as discussed above. DEFOREL further teaches An aerosol generating article (Fig. 2, aerosol generating article 1000, ¶211) comprising an aerosol-forming substrate (Fig. 2, aerosol forming substrate 1020, ¶211) according to claim 16.
Conclusion
It is noted that the art is crowded with references that combine materials with different particles sizes, form a slurry, cast the slurry, and dry it. For example, US 3820548 A to BUCHMANN, US 20160286852 A1 to GINDRAT, and US 20170273347 A1 to KLIPFEL. This sampling of references teach the combination of dry particulate, made into a slurry, cast, and dried. Advantages are cited for using materials like tobacco dust (a particulate) or strengthening a fiber. A person of ordinary skill in the art would immediately recognize that mixing particulate materials will have one with a larger and one with a smaller particle size.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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