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
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 2, 4, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Batista et al. (WO 2020/174026).
Claim 1. Batista et al. discloses an inductively heatable aerosol-generating article comprising an aerosol-forming rod 10 (aerosol generating substrate), a support element 60 (spacing element), an aerosol-cooling element 70 (cooling element), and a filter element 80 (filter) (support element 60, cooling element 70, and filter element 80 together forming a mouthpiece). The elements are circumscribed by an outer wrapper 90 (Figure 1; Page 33, line 19 – Page 34, line 2). The aerosol-forming rod 10 (aerosol generating substrate) comprises a porous foam produced from fibers and materials of natural origin, for example fibers and materials originating from botanicals or vegetables. The foam may comprise tobacco or tobacco material, or alternatively, may be free of tobacco. The porous foam may comprise nicotine in its original formulation. The porous foam may be impregnated or soaked with an aerosol-forming liquid. The aerosol-forming liquid may comprise at least one of nicotine and at least one flavoring substance (Page 10, lines 16-23).
Batista et al. does not explicitly disclose that the aerosol-forming rod 10 (aerosol generating substrate) comprises between 0.1 and 10 wt. % nicotine in dry basis of the aerosol-forming rod 10 (aerosol generating substrate). However, differences in concentration do not generally support the patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (See MPEP §2144.05(II)). It would have been obvious to one of ordinary skill in the art before the effective filing date that the amount of nicotine in the aerosol-forming rod 10 (aerosol generating substrate) be optimized to meet the preferences of the user. Thus, the resulting aerosol-forming rod 10 (aerosol generating substrate) may have between 0.1 and 10 wt. % nicotine in dry basis as a result of routine optimization.
Claim 2. Modified Batista et al. discloses that the foam may comprise tobacco or tobacco material, or alternatively, may be free of tobacco (Page 10, lines 16-23).
Claim 4. Modified Batista et al. discloses the aerosol generating article of claim 1 but does not explicitly disclose that the aerosol-forming rod 10 (aerosol generating substrate) comprises between 0.1 and 4 wt. % nicotine in dry basis of the aerosol-forming rod 10 (aerosol generating substrate). However, differences in concentration do not generally support the patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (See MPEP §2144.05(II)). It would have been obvious to one of ordinary skill in the art before the effective filing date that the amount of nicotine in the aerosol-forming rod 10 (aerosol generating substrate) be optimized to meet the preferences of the user. Thus, the resulting aerosol-forming rod 10 (aerosol generating substrate) may have between 0.1 and 4 wt. % nicotine in dry basis as a result of routine optimization.
Claim 14. Modified Batista et al. discloses that the aerosol-forming rod 10 (aerosol generating substrate) comprises flavorings and nicotine of natural or artificial origin (Page 10, lines 5-15).
Claim 16. Modified Batista et al. discloses that the aerosol-forming rod 10 (aerosol generating substrate) extends from an upstream end towards a downstream end of the article (Figure 1).
Claim 17. Modified Batista et al. discloses that the aerosol-forming rod 10 (aerosol generating substrate) is in the form of a cylindrical rod (Figure 1; Page 1, line 30 – Page 2, line 2).
Claim 18. Modified Batista et al. discloses that the support element 60 may comprise a cellulose-based tube 62 having a central air passage 61 (Figure 1; Page 34, lines 7-12).
Claim 19. Modified Batista et al. discloses that the support element 60 may have a length of between 5 millimeter and 15 millimeter (Page 21, lines 15-17). Since the range between 5 millimeter and 15 millimeter overlaps the claimed range of between 10 mm and 25 mm, a prima facie case of obviousness exists (MPEP 2144.05(I)).
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375) in view of Batista et al. (WO 2020/174026).
Claim 1. Plattner et al. discloses a foamed tobacco product comprising a foam comprising a tobacco ingredient containing agent and/or an inhalable agent, an aerosol forming agent, a foam stabilizing agent, and a foam forming agent (Page 2, lines 8-23). The tobacco ingredient containing agent can be any compound, mixture, particle matter, and/or solution that contains and/or carries a constituent of tobacco, either artificially included or naturally contained in tobacco, e.g. tobacco, tobacco particles, tobacco flavor and/or nicotine (Page 4, lines 11-15). The inhalable agent can be any compound, mixture, particle matter and/or solution that may be inhaled, for example as a gas and/or aerosol, and it e.g. includes and/or carries at least one of a stimulant, e.g. caffeine, guarana and combinations thereof, and/or a flavor, e.g. menthol, natural and/or artificial plant flavors, saccharides, animal flavors, and combinations thereof (Page 4, lines 16-22). The foam can be arranged as a pod, disc, or stick, and may be wrapped in a porous paper, for example with a filter at the tip proximal the user. The porous paper is not particularly limited and may be made of wood pulp and/or hemp fibers or combinations thereof. The filtering material of the filter is not particularly limited and may be any filamentary material conventionally employed for tobacco smoke filter manufacture. The filtering material may be a natural or synthetic filamentary tow, e.g. of cotton or plastics such as polyethylene or polypropylene, or cellulose acetate filamentary tow (Page 14, lines 3-12).
Plattner et al. does not explicitly disclose that the foamed tobacco product comprises between 0.1 and 10 wt. % nicotine in dry basis. However, differences in concentration do not generally support the patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (See MPEP §2144.05(II)). It would have been obvious to one of ordinary skill in the art before the effective filing date that the amount of nicotine in the foamed tobacco product be optimized to meet the preferences of the user. Thus, the resulting foamed tobacco product may have between 0.1 and 10 wt. % nicotine in dry basis as a result of routine optimization.
Plattner et al. does not explicitly disclose that the foamed tobacco product is included in an aerosol generating article comprising a mouthpiece downstream of the aerosol generating substrate, wherein the mouthpiece comprises a spacing and/or cooling element provided between the aerosol generating substrate and the filter.
Batista et al. discloses an inductively heatable aerosol-generating article comprising an aerosol-forming rod 10 (aerosol generating substrate), a support element 60 (spacing element), an aerosol-cooling element 70 (cooling element), and a filter element 80 (filter) (support element 60, cooling element 70, and filter element 80 together forming a mouthpiece) (Figure 1; Page 33, line 19 – Page 34, line 2). The aerosol-forming rod 10 (aerosol generating substrate) comprises a porous foam produced from fibers and materials of natural origin, for example fibers and materials originating from botanicals or vegetables. The foam may comprise tobacco or tobacco material, or alternatively, may be free of tobacco (Page 10, lines 16-23).
Batista et al. teaches that the support element 60 allows for mixing and homogenization of any aerosols generated inside the aerosol-forming rod 10. The aerosol-cooling element 70 mainly serves to reduce the aerosol temperature towards the proximal end 3 of the article 1 (Page 34, lines 7-16). It would have been obvious to one of ordinary skill in the art before the effective filing date to include a support element 60 and aerosol-cooling element 70 between the foamed tobacco product and filter of the article disclosed by Plattner et al. in order to promote mixing and homogenization of the aerosols and to reduce the aerosol temperature towards the proximal end of the article as taught by Batista et al.
Claim 2. Modified Plattner et al. discloses that the foam may comprise an inhalable agent instead of a tobacco ingredient containing agent, wherein the inhalable agent can be any compound, mixture, particle matter and/or solution that may be inhaled, for example as a gas and/or aerosol, and it e.g. includes and/or carries at least one of a stimulant, e.g. caffeine, guarana and combinations thereof, and/or a flavor, e.g. menthol, natural and/or artificial plant flavors, saccharides, animal flavors, and combinations thereof (Plattner Page 8, lines 30-34).
Claim 3. Modified Plattner et al. discloses that the foamed tobacco product comprises a foam stabilizing agent and a foam forming agent (Page 2, lines 8-23).
Claim 4. Modified Plattner et al. discloses the aerosol generating article of claim 1 but does not explicitly disclose that the foamed tobacco product comprises between 0.1 and 4 wt. % nicotine in dry basis. However, differences in concentration do not generally support the patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (See MPEP §2144.05(II)). It would have been obvious to one of ordinary skill in the art before the effective filing date that the amount of nicotine in the foamed tobacco product be optimized to meet the preferences of the user. Thus, the resulting foamed tobacco product may have between 0.1 and 4 wt. % nicotine in dry basis as a result of routine optimization.
Claims 5 and 6. Modified Plattner et al. discloses that the aerosol forming agent is comprised in an amount of 10 to 80 wt.-%, preferably 20 to 75 wt.-%, further preferably 40 - 70 wt.-%, further preferably 45 - 70 wt.-%, more preferably 45 - 65 wt.-%, particularly preferably 50 - 63 wt.-%, more preferably 55 to 65 wt.- %, e.g. about 60 wt.-% of the weight of the foam (Plattner Page 12, lines 27-31). Since the range 45 - 70 wt.-% overlaps the claimed range of between 60 wt % and 70 wt %, a prima facie case of obviousness exists (MPEP 2144.05(I)).
Claims 7 and 8. Modified Plattner et al. discloses that a combination of glycerol and propylene glycol can be used as aerosol forming agent (Plattner Page 11, lines 13-34).
Claim 9. Modified Plattner et al. discloses that the foam forming agent is selected from the group consisting of agar, gellan gum, lecithin, polyglycerol esters of fatty acids, glycerol esters of fatty acids, sorbitan esters of fatty acids, and/or mixtures thereof (Plattner Page 10, lines 23-36).
Claims 10, 11, and 12. Modified Plattner et al. discloses that the foam stabilizing agent is selected from the group consisting of cellulose gum, hydroxyalkylated carbohydrates, derivatives thereof, e.g. salts thereof, preferably alkali metal salts thereof, e.g. sodium and/or potassium salts thereof, and mixtures thereof (Plattner Page 9, line 30 – Page 10, line 16).
Claim 13. Modified Plattner et al. discloses that the foam can further comprise a foam based on tobacco fibers (wherein tobacco fibers contain cellulose) (Batista Page 8, lines 16-21). Modified Plattner et al. discloses the fiber is present in an amount between 5 wt % and 15 wt % of the foam. However, differences in concentration do not generally support the patentability of the subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical (See MPEP §2144.05(II)). It would have been obvious to one of ordinary skill in the art before the effective filing date that the amount of tobacco fibers in the foamed tobacco product be optimized to meet the preferences of the user. Thus, the resulting foamed tobacco product may have tobacco/cellulose fiber present in an amount between 5 wt % and 15 wt % of the foam.
Claim 14. Modified Plattner et al. discloses that the foam can further comprise at least one non-tobacco flavoring agent. In certain embodiments, the flavors can be selected from menthol, natural plant flavors, etc. (Plattner Page 13, lines 15-32).
Claim 15. Modified Plattner et al. discloses that the non-tobacco flavoring agent can be e.g. added in an amount so that the total amount of tobacco ingredient containing agent and the non-tobacco flavoring agent add up to the amounts given for the tobacco ingredient containing agent (Plattner Page 13, lines 35-37). The tobacco ingredient containing agent and/or the inhalable agent are preferably comprised in the present foam in an amount of 0.1 to 40 wt.-%, further preferably 0.1 - 33 wt.-% of the weight of the foam (Plattner Page 8, lines 35-37). Since the range 0.1 - 33 wt.-% overlaps the claimed range of 0.2 to 18 wt %, a prima facie case of obviousness exists (MPEP 2144.05(I)).
Claims 16 and 17. Modified Plattner et al. discloses that the foams can be arranged as a pod, disc, or stick (cylindrical rod), and may be wrapped in a porous paper, for example with a filter at the tip proximal the user (Plattner Page 14, lines 6-7).
Claim 18. Modified Plattner et al. discloses that the support element 60 may comprise a cellulose-based tube 62 having a central air passage 61 (Batista Figure 1; Page 34, lines 7-12).
Claim 19. Modified Plattner et al. discloses that the support element 60 may have a length of between 5 millimeter and 15 millimeter (Batista Page 21, lines 15-17). Since the range between 5 millimeter and 15 millimeter overlaps the claimed range of between 10 mm and 25 mm, a prima facie case of obviousness exists (MPEP 2144.05(I)).
Claims 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375) in view of Batista et al. (WO 2020/174026) and further in view of England et al. (US 2022/0183350).
Claim 20. Plattner et al. in view of Batista et al. discloses the article of claim 1 but does not explicitly disclose wherein the filter has a pressure drop lower than 15 mmH2O/mm wherein the pressure drop is determined under standard conditions defined by Coresta Recommended Method No. 41 (2007) and Coresta Guide No. 4 (2019).
England et al. discloses an article for use in a non-combustible aerosol provision system, the article comprising an aerosol generating material and a mouthpiece downstream of the aerosol generating material (Abstract). The pressure drop or difference (also referred to a resistance to draw) across the mouthpiece, for instance the part of the article 1 downstream of the aerosol generating material 3, is preferably less than about 40 mmH.sub.20. More preferably, the pressure drop across the mouthpiece 2 is less than about 32 mmH.sub.20. In some embodiments, particularly improved aerosol has been achieved using a mouthpiece 2 having a pressure drop of less than 31 mmH.sub.20, for instance about 29 mmH.sub.20, about 28 mmH20 or about 27.5 mmH.sub.20. Alternatively or additionally, the mouthpiece pressure drop can be at least 10 mmH.sub.20, preferably at least 15 mmH.sub.20 and more preferably at least 20 mmH.sub.20 ([0117]).
England et al. teaches that the disclosed pressure drops have been found to allow sufficient aerosol, including desirable compounds such as flavor compounds, to pass through the mouthpiece 2 to the consumer. These values enable the mouthpiece 2 to slow down the aerosol as it passes through the mouthpiece 2 such that the temperature of the aerosol has time to reduce before reaching the downstream end 2b of the mouthpiece 2 ([0117]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the filter of Plattner et al. to have a pressure drop lower than 15 mmH2O/mm to allow sufficient aerosol, including desirable compounds such as flavor compounds, to pass through the mouthpiece to the consumer, and to slow down the aerosol as it passes through the mouthpiece such that the temperature of the aerosol has time to reduce before reaching the downstream end of the mouthpiece, as taught by England et al..
Claim 22. Modified Plattner et al. discloses wherein the body of material 6 (mouthpiece filter) is formed from filamentary tow ([0119]). The filamentary tow material described herein can comprise cellulose acetate fiber tow ([0050]). The tow used in the body of material 6 has a denier per filament (d.p.f) of 8.4 and a total denier of 21,000 (e.g. 8.4Y21000). Alternatively, the tow can, for instance, have a denier per filament (d.p.f.) of 9.5 and a total denier of 12,000 (e.g. 9.5Y9500), or a denier per filament of 8.0 and a total denier of 15,000 ([0119]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Plattner et al. (WO 2018/122375) in view of Batista et al. (WO 2020/174026) and further in view of Kwon et al. (US 2024/0298697).
Claim 21. Plattner et al. in view of Batista et al. discloses the article of claim 1 but does not explicitly disclose wherein the filter comprises a filtering material comprising a paper of basis weight 20 to 40 g/m2.
Kwon et al. discloses an aerosol-generating article comprising filter segments 211 and 213 which include a paper material. A basis weight of the paper material may be in a range of about 20 g/m.sup.2 to 40 g/m.sup.2, and preferably in a range of about 23 g/m.sup.2 to 37 g/m.sup.2, in a range of about 25 g/m.sup.2 to 35 g/m.sup.2, or in a range of about 27 g/m.sup.2 to 33 g/m.sup.2 ([0093]-[0102]).
Kwon et al. teaches that the filter segments having a basis weight in the disclosed ranges provide a filter segment with suitable resistance to draw, and ensure a suitable vapor production ([0107]). It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the filter of Plattner et al. to comprise a paper filtering material having a basis weight of 20 to 40 g/m2 in order to provide a suitable resistance to draw, and ensure a suitable vapor production as taught by Kwon et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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