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 1-13 are pending and are subject to this office action. This is the first Office Action on the merits of the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation, “removing cations” but does not specify what substance the cations are removed from. It is unclear if the cations are being removed from a liquid, more specifically an additive liquid, or another undefined substance. The specification appears to disclose that the cations are removed from a liquid ([0034]). Therefore, for the purposes of examination “removing cations” will be interpreted as removing cations from a liquid.
Claims 2-8 and 11-13 are rejected by virtue of their dependence on claim 1. Claims 9 and 10 are also rejected as they require the additive liquid prepared by the method in claim 1.
Claim 10 recites the limitation, “a liquid storage chamber configured to accommodate an additive liquid; an atomization component configured to cause the additive liquid of the atomizer to form an aerosol” in lines 2-4 and “the additive liquid of the atomizer of claim 9” in line 6. It is unclear if the additive liquid recited in claims 2-4 is the same additive liquid recited in line 6 or that the atomizer further comprises an additional additive liquid. The specification appears to disclose a single additive liquid in the atomizer ([0027]). For the purposes of examination, the additive liquid of the atomizer of claim 9 will be interpreted as wherein the additive liquid of the atomizer is the additive liquid of claim 9.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-5, 7, 9 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Keritsis (US 4302308 A, as cited on IDS dated 04/21/2025).
Regarding claim 1, Keritsis discloses a method of electrolytic denitration of an aqueous tobacco extract (“an additive liquid”, Fig. 2, abstract), the method comprising:
Removing potassium ions (cations) from the aqueous tobacco extract (Fig. 2, Fig. 3, col. 9 lines 18-53).
In regards to the limitation requiring an additive liquid of an atomizer, the Examiner notes that the claim is directed to a method of preparing an additive liquid, and the additive liquid being for an atomizer is claimed as intended use. The claim does not require a step of providing the additive liquid in an atomizer and therefore Keritsis disclosing an aqueous tobacco extract is considered to read on the claimed additive liquid.
Regarding claim 3, Keritsis discloses the method comprises removing cations comprising potassium ions (Fig. 2, Fig. 3, col. 9 lines 18-53).
Regarding claim 4, Keritsis discloses removing potassium ions (cations) using a cation exchange resin and removing nitrate ions (anions) using an anionic exchange resin (Fig. 2, Fig. 3, col. 9 lines 18-53).
Regarding claim 5, Keritsis discloses a method comprising removing potassium ions (cations) and removing nitrate ions (anions) simultaneously through electrodialysis (Fig. 2, Fig. 3, col. 9 lines 18-53).
Regarding claim 7, Keritsis discloses the method of preparing the tobacco extract comprises extracting the tobacco adding an aqueous solution such as water (“an atomization solvent”, col. 3 lines 3-18).
Regarding claim 9, Keritsis discloses a denitrated tobacco extract (“an additive liquid of an atomizer”) produced by removing potassium ions (cations) from an aqueous tobacco extract (Fig. 2, Fig. 3, col. 9 lines 18-53).
In regard to the limitation requiring an additive liquid of an atomizer, the Examiner notes that the claim is directed to an additive liquid, and the additive liquid being for an atomizer is claimed as intended use. The claim does not require an atomizer. The aqueous tobacco extract disclosed by Keritsis is considered to be capable of being used in an atomizer, and therefore is considered to read on the claim.
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.
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Keritsis (US 4302308 A, as cited on IDS dated 04/21/2025), as applied to claim 1 above, further in view of Ge (CN 104351943 A).
Regarding claim 2, Keritsis discloses a method of removing nitrate salts such as potassium nitrate comprising nitrate ions (“removing anions”) from an aqueous tobacco extract, where the removal of nitrate salts from the extract reduces the amount of oxides of nitrogen when the extract is smoked (Fig. 2, col. 1 lines 14-31, col. 9 lines 18-53).
The Examiner notes that the electrical conductivity of a solution is impacted by the concentration of ions, and therefore the removal of nitrate salts is expected to reduce the electrical conductivity of the denitrated extract produced by the electrodialysis process.
Keritsis does not explicitly disclose the electrical conductivity of the denitrated extract produced by the electrodialysis process.
However, Ge, directed to a method of removing nitrates from a tobacco concentrate ([0008]), discloses:
Removing nitrates from a tobacco extract using a multi-stage electrodialysis until the electrical conductivity reaches 0.3 mS/cm, which effectively removes enough nitrates to limit the release of nitrosamines (TSNAs) when smoking the extract ([0004, 0008, 0039, 0044, 0046]). The electrical conductivity of the tobacco concentrate taught by the prior art lies within the claimed range and therefore the claimed range is considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Keritsis by performing the electrodialysis process until the electrical conductivity of the solution is decreased to 0.3 mS/cm, as taught by Ge because both Keritsis and Ge are directed to methods of removing nitrates from a tobacco extract, Keritsis discloses a method of removing nitrate salts from a tobacco solution such that the electrical conductivity would be decreased but is silent to the range of electrical conductivity in the solution produced from the electrodialysis process, Ge teaches reducing the electrical conductivity of a tobacco concentrate to 0.3 mS/cm to effectively remove enough nitrates to limit the release of nitrosamines (TSNAs) when smoking the extract, and this involves reducing the electrical conductivity of a tobacco extract to a known level in a similar method to yield predictable results.
Regarding claim 11, Ge discloses removing nitrates from a tobacco extract using a multi-stage electrodialysis until the electrical conductivity reaches 0.3 mS/cm ([0004, 0008, 0039, 0044, 0046]). The electrical conductivity of the tobacco concentrate taught by the prior art lies within the claimed range and therefore the claimed range is considered prima facie obvious.
Claims 6 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Keritsis (US 4302308 A, as cited on IDS dated 04/21/2025).
Regarding claims 6 and 12, Keritsis discloses the degree to which a solution is demineralized is proportional to the electrical current flowing through the process (i.e. a higher current increases the rate of salt/mineral removal and thereby reduces the duration of the process) with higher currents being limited by the resistance of the stack and conductivity of the solution (col. 8 lines 32-42), lower voltages may require more cells and therefore higher capital investment, and higher voltages require higher power consumption and may lead to membrane fouling (col. 8 lines 43-63).
In one example, Keritsis discloses the denitration process was carried out using 75 volts/ stack (0.75 volts/ cell pair across 100 cell pairs), a current density of 10-20 amps/ft2, and the process duration was up to 24 hours (Example 1, col. 10 lines 45-68, col. 11 lines 1-18). The Examiner notes the claim requires a voltage, a current, and a duration of the electrodialysis and does not specify if the parameters are across a specific number of membranes or full electrodialysis stack. Therefore, the voltage per cell pair, current density, and process duration are considered to overlap with the claimed ranges and therefore the claimed ranges are considered to be prima facie obvious.
Additionally, given that the current impacts the duration of the process, and the voltage impacts the cost and power consumption, a person having ordinary skill in the art would be motivated to perform routine optimization. Moreover, a person having ordinary skill in the art would have reasonable expectation of success through experimentation of determining a preferred range of voltage by optimizing the number of cells required and power consumption, and determining a preferred current and duration by optimizing the nitrate removal rate, as disclosed by Keritsis. Therefore, a person having ordinary skill in the art, through routine optimization would arrive at the claimed voltage, current, and duration, absent evidence to the contrary.
Claims 8 and 13 rejected under 35 U.S.C. 103 as being unpatentable over Keritsis (US 4302308 A, as cited on IDS dated 04/21/2025) in view of Ge (CN 104351943 A), as applied to claim 1 above, further in view of Nanaski (US 20240334963 A1).
Regarding claim 8, Keritsis discloses the method of preparing the tobacco extract comprises adding an aqueous solution such as water to tobacco (“a to-be-processed substance, col. 3 lines 3-18), and following the electrodialysis process the extract may be concentrated by evaporation (i.e. removing water after the removal of cations, col. 4 lines 1-14).
Keritsis further discloses higher concentrations of extract increase the viscosity and limit the flowrate used in the electrodialysis process (col. 8 lines 16-30).
Keritsis does not explicitly disclose water is addended to obtain a viscosity of 1 cP to 100 cP.
However, Nanaski, directed to a plant extract production method for a nicotine containing plant ([0043, 0050]), discloses:
An extraction step comprising adding the plant to water ([0054]), where viscosity of the plant extract obtained is 0.7 mPa·s to 8 mPa·s ([0061]). The claimed range overlaps with the range by the prior art and therefore the claimed range is considered prima facie obvious.
The plant extract is then subject to a dialysis step ([0074-775]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Keritsis, in view of Ge, by adding water to obtain an extract with a viscosity of 0.7 mPa·s to 8 mPa·s, as taught by Nanaski because both Keritsis and Nanaski are directed to methods of processing plant extracts, Keritsis discloses the viscosity of the plant extract impacts the flowrate using in the subsequent electrodialysis process, Nanaski teaches a similar extraction processes preceding electrodialysis which obtained a viscosity in a known range, and this involves applying a known viscosity range of a plant extract in a similar method to yield predictable results.
Regarding claim 13, Keritsis discloses water can be added at a ratio of water to tobacco of 5:1 to 100:1 (w/w) to obtain an aqueous tobacco extract with 5-50% solids content (col. 3 lines 3-18). Although Keritsis does not explicitly disclose the volume ratio of water to tobacco, a water to tobacco weight ratio of 5:1 to 100:1 reasonably suggests a volume ratio of water to tobacco that overlaps with the claimed range and is therefore considered prima facie obvious.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Digard (US 20210153546 A1) in view of Keritsis (US 4302308 A, as cited on IDS dated 04/21/2025).
Regarding claim 10, Digard discloses to a cartridge (300, “an atomizer”) for generating an inhalable medium (Fig. 3a, [0071-0072]), comprising:
A chamber (801, “liquid storage chamber”) for containing a liquid tobacco extract (Fig. 3a, [0007, 0072]), and;
A heater (811, “atomization component”) for heating the liquid to vaporize the liquid, the heater (811) in fluid communication with the chamber (801, Fig. 3a, [0072, 0077]).
Digard does not explicitly disclose the liquid tobacco extract is produced by a process comprising removing cations.
However, Keritsis directed to a denitrated tobacco extract, discloses:
A denitrated tobacco extract produced by removing potassium ions (cations) from an aqueous tobacco extract (Fig. 2, Fig. 3, col. 9 lines 18-53).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Digard by substituting the tobacco extract for the tobacco extract disclosed by Keritsis, because both Digard and Keritsis are directed to tobacco extracts for smoking, Digard discloses atomizer comprising a liquid tobacco extract, and Keritsis discloses a similar tobacco extract made by a process comprising removing potassium nitrate, and this involves substituting one known tobacco extract for another to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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/M.F.D./
Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
