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 Objections
Claim 28 is objected to because it recites “a” cartridge which was previously introduced in claim 15 and should therefore recite “[[a]]the” cartridge.
Appropriate correction is required.
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 15, 18-19, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Edwards (US 2015/0367366 A1, provided in IDS dated 02/08/2024) in view of Lisauskas (WO 2012/061249 A2).
Regarding claim 15, Edwards is directed to an aerosol dispenser with edible cartridge (Title), which reads on a “cartridge for an aerosol-generating device” as claimed. The cartridge 110 has a housing 130 defining an internal reservoir 132 (“container”) which stores an aerosolizable product ([0075], Figs. 10-12). The cartridge may be formed from a “biodegradable material” as claimed [0028]. Edwards fails to disclose that the cartridge includes “a plant seed, and wherein the plant seed is germinable” as claimed.
Lisauskas is directed to a cigarette filter with modified wrapper (Title), which is in the same field of endeavor as the claimed invention (i.e., aerosol-generating devices; smoke is a well-known aerosol; see also Applicant’s specification at p. 7 disclosing that the aerosol-forming substrate may comprise nicotine, which is a well-known component of cigarettes). The filter wrapper has seeds embedded therein which will germinate and grow once the filter is discarded (Abstract), which reads on “a plant seed, and wherein the plant seed is germinable”. Lisauskas explains that this advantageously accelerates biodegradation of the filter and is environmentally friendly (Abstract, [0001-2, 0018, 0031]). One of ordinary skill in the art would recognize that Lisauskas’ germinable seeds could similarly be incorporated into Edwards’ cartridge to predictably increase its biodegradability and environmental friendliness.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to modify Edwards by incorporating Lisauskas’ germinable seeds into Edwards’ cartridge, because both Edwards and Lisauskas are in the same field of endeavor as the claimed invention, Lisauskas teaches that the germinable seeds increase the biodegradability and environmental friendliness of its wrapper which a PHOSITA would recognize is similarly applicable to Edwards’ cartridge, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 18, Edwards discloses that the biodegradable cartridge material is formed from at least one of a polyhydroxyalkanoate, a polylactic acid, or an enhanced biodegradable plastic [0008], which reads on numerous recited components in claim 18.
Regarding claim 19, Lisauskas discloses that some interior seeds 34 may be embedded in the filter body or a filter core 32, and other exterior seeds 20 may be incorporated in an outer wrapper 18 surrounding the filter body ([0037], Fig. 6). This advantageously breaks down the filter more readily both from the inside and the outside as the seeds germinate [0037]. One of ordinary skill in the art would recognize that Lisauskas’ germinable seeds could be dispersed at various locations of Edwards’ cartridge 110 to similarly promote the biodegradation of the cartridge housing 130, for instance by forming an additional space for locating seeds around the reservoir 132 (see Edwards Figs. 10-12), which reads on “wherein the plant seed is provided at an outside of the container defined by the cartridge”.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Edwards by incorporating Lisauskas’ germinable seeds around Edwards’ reservoir 132, for the same reasons as set forth above in the discussion of claim 15, further because Edwards teaches that such dispersal of seeds more readily biodegrades its filter, and because this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 28, Edwards discloses an aerosolizing delivery device including the cartridge (Abstract), which reads on “[a]n aerosol-generating system, comprising an aerosol-generating device and a cartridge according to claim 15”.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards (US 2015/0367366 A1) in view of Lisauskas (WO 2012/061249 A2) as applied to claim 15, further in view of Nordskog (US 2016/0128294 A1).
Edwards and Lisauskas fail to disclose “wherein the plant seed has flavoring properties” as recited in claim 16.
Nordskog is directed to infused plant seeds for use within tobacco products including smoking articles to alter the properties thereof (Title, Abstract), which is in the same field of endeavor as the claimed invention. Nordskog discloses that the sensory attributes of cigarette smoke can be enhanced by incorporating flavoring materials into various components of a cigarette [0003, 0030], which one of ordinary skill in the art would recognize as an advantage increasing the user experience, which could predictably be applied to Edwards’ cartridge for producing aerosol. Flavorants can be infused within the plant seed by various methods [0031-33].
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Edwards by infusing Lisauskas’ germinable seeds with Nordskog’s flavorant (which reads on “wherein the plant seed has flavoring properties”), because Edwards, Lisausakas, and Nordskog are each analogous art to the claimed invention, Nordskog teaches advantegously infusing plant seeds with flavorants to enhance sensory attributes of cigarette smoke, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Edwards (US 2015/0367366 A1) in view of Lisauskas (WO 2012/061249 A2) as applied to claim 15, further in view of Wang (CN 106810368 A, English translation provided herewith).
Lisauskas generally discloses grass seeds, flower seeds, and fruit and vegetable seeds [0023], but Edwards and Lisauskas fail to specifically disclose “wherein the plant seed is selected from one or more of: seeds of sparagales, monocotyledonous flowering plants, including Orchid plants, Cymbidium Orchid, Pimpinella Anisum, Illicium Verum, Foeniculum Vulgaris, Calendula Officinalis, Anthemis Tomentosa, and Anthriscus Cerefolium” as claimed.
Wang is directed to a broad-spectrum aseptic sowing medium for tropical orchids with a high seed germination rate (Title, [0007]), which is reasonably pertinent to the problems solved by the inventors of the instant application (i.e., selection of seeds for germination, see specification at p. 2 l. 3-16). Wang discloses that orchids are one of the most famous and well-known flowers worldwide in flower production and are easily cultivated [0004]. Therefore, one of ordinary skill in the art seeking to implement Lisauskas’ disclosure regarding flower seeds would be motivated to select orchid seeds specifically, which reads on “wherein the plant seed is selected from one or more of: seeds of…Orchid plants”.
Therefore, before the effective filing date of the claimed invention, it would have been obvious for one having ordinary skill in the art to further modify Edwards by using orchid seeds as Lisauskas’ germinable seeds, because Lisauskas discloses flower seeds generally but is silent on specific seeds whereas Wang discloses that orchid seeds are generally well-known and easy to cultivate, Edwards, Lisauskas, and Wang are each analogous art to the claimed invention, and this would involve combining prior art elements according to known methods to yield predictable results. See MPEP 2143(I); see also KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Allowable Subject Matter
Claims 20-27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or suggest “wherein the plant seed is provided in an herbal sheet” as recited in claim 20. Modified Edwards (US 2015/0367366 A1) in view of Lisauskas (WO 2012/061249 A2) provides a biodegradable cartridge including a germinable plant seed, as set forth above in the discussion of claim 15. However, neither reference specifically discloses nor provides motivation for including Lisauskas’ germinable plant seed within an herbal sheet of Edwards’ cartridge. Lisauskas discloses arranging seeds within layers of wrapping paper and/or tipping paper in a cigarette filter (see claims 1-16), but such paper does not read on an “herbal sheet” as claimed. Claims 21-27 are dependent on claim 20 and therefore similarly contain allowable subject matter.
Conclusion
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/MICHAEL PATRICK MULLEN/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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