2

US 2015/0020824 claims as an invention the formulation of e-cigarette "e-liquid" with nicotine salts.

This idea has been a subject of much discussion for many years within the online vaping community. A quick search brings up a few threads on one of the most popular forums:

In fact, reading these posts, it appears some manufacturers may already have produced such e-liquid. Nonetheless, would these discussions, had publicly, qualify as prior art to the patent referenced above?

Nicotine salts in e-liquids may be a very important step in producing e-cigarettes that are more effective for smokers, and the company that produced this patent already sold their previous invention to the tobacco industry (Ploom, sold to JTI). The tobacco industry (Altria) already has a patent on a "nicotine pyruvate" device, which they've sat on for many years. It would be a hideous thing were the tobacco industry to acquire and sit on this technology.

2

Read the conclusion. Also pretty sure this counts as prior art.

Oct 2000 - The Transfer of Nicotine from Nicotine Salts to Mainstream Smoke : http://www.degruyter.com/dg/viewarticle.fullcontentlink:pdfeventlink/$002fj$002fcttr.2000.19.issue-3$002fcttr-2013-0702$002fcttr-2013-0702.pdf/cttr-2013-0702.pdf?t:ac=j$002fcttr.2000.19.issue-3$002fcttr-2013-0702$002fcttr-2013-0702.xml

Apparently study was started in the 70s : http://www.sciencemadness.org/talk/files.php?pid=223992&aid=16157

1

Public discussions can indeed qualify as Prior Art if the dates of the post are available, and the posts can be proven to pre-date the priority date application in question. This is the case for US 2015/0020824, which has a Priority Date of May 6, 2013.

Just so we can be clear on the commercial entities (I was initially confused by the series of legal events), Ploom, Inc. is the original company that produced the IP. JTI later took a minority share in the company. Then, in February 2015 Ploom, Inc. bought back its shares from JTI by transferring the original patents, trademarks and product lines (as the "new" Ploom, Inc.) to JTI. The "old" Ploom, Inc., without the Ploom trademark, was renamed to Jax Labs and retained its newer IP.

The newer applications were originally disclosed by Ploom, Inc., which later became Pax Labs. The original Ploom, Inc. patents and Ploom trademark are owned by the "new" Ploom, Inc. (a wholly owned subsidiary of JTI); for reference those issued patents are US 8,915,254 and US 8,925,555. There may be some Canadian, European and WIPO patents transferred as well, but I am focusing just on the US patents here.

JTI Acquires “Ploom” Intellectual Property Rights from Ploom, Inc. (Ploom to Adopt New Corporate Identity as PAX Labs, Inc.)

Ploom, Inc. announced today that JTI will acquire Ploom’s modelTwo and pods product line – including the “Ploom” trademark – and general intellectual property related to modelTwo and pods. Concurrent with the transaction, Ploom, Inc. will buy back JTI’s minority stake in order to focus on Ploom’s successful PAX business and an expanding product portfolio.

Ploom’s new corporate name will be PAX Labs, Inc.

The old Ploom, Inc. (now Pax Labs) has several new patent applications. This is the bolus of US patent applications/grants that Pax Labs now owns:

  • US 2013/0042865 Low temperature electronic vaporization device and methods
  • US 2014/0060552 Methods and devices for delivery and monitoring of tobacco, nicotine, or other substances
  • US 2009/0151717 Aerosol devices and methods for inhaling a substance and uses thereof
  • US 2015/0157056 Aerosol devices and methods for inhaling a substance and uses thereof
  • US 8,991,402 Aerosol devices and methods for inhaling a substance and uses thereof
  • US 2014/0345631 Nicotine salt formulations for aerosol devices and methods thereof
  • US 2015/0020824 Nicotine salt formulations for aerosol devices and methods thereof

The one you cited (US 2015/0020824) is actually a Divisional Patent, so you are also likely interested in US 2014/0345631 as well.

Finally, we can begin to examine the claims. I will first provide comments on the independent claims in light of the forum posts you cited. If these 8 independent claims can be invalidated, then the remainder of the claims will also be invalidated.

US 2014/0345631

Claim 105. A method of delivering nicotine to a user comprising

  • (a) deploying an electronic cigarette wherein the electronic cigarette comprises a nicotine salt formulation comprising a nicotine salt in a biologically acceptable liquid carrier wherein an acid used to form said nicotine salt is characterized by a vapor pressure great than or equal to 20 mmHg at 200° C., and
  • (b) delivering an inhalable aerosol generated from the nicotine salt formulation heated by the electronic cigarette.
nicotine delivery: yes

electronic cigarette: yes
nicotine salt formulation: yes
biologically acceptable liquid carrier: yes
acid is used to form nicotine salt: yes
acid has pressure greater than or equal to 20 mmHg at 200° C: ???

inhalable aerosol generated from nicotine salt: yes
aerosol heated by electronic cigarette: yes

The issue to address here is the pressure greater than or equal to 20 mmHg at 200° C. If you can find a reference for this and/or prove that it would be an obvious step to one skilled in the art, then you can check of Claim 105 and all of its dependent claims (106-114).

Claim 115. A method of delivering nicotine to a user comprising

  • (a) deploying an electronic cigarette wherein the electronic cigarette comprises a nicotine salt formulation comprising a nicotine salt in a biologically acceptable liquid carrier wherein an acid used to form said nicotine salt is further characterized by a melting point at least 40° C lower than the operating temperature of the electronic cigarette, and at least a 50° C difference between a melting point of the acid and a boiling point of the acid, and
  • (b) delivering an inhalable aerosol generated from the nicotine salt formulation heated by the electronic cigarette.
nicotine delivery: yes

electronic cigarette: yes
nicotine salt formulation: yes
biologically acceptable liquid carrier: yes
acid is used to form nicotine salt: yes
acid has melting point at least 40° C lower than electronic cigarette: ???
acid has melting point at least 50° C lower than its boiling point: ???

inhalable aerosol generated from nicotine salt: yes
aerosol heated by electronic cigarette: yes

The issue to address here is the melting point and boiling point of the acid relative to the temperature of the electronic cigarette. If you can find a reference for this and/or prove that it would be an obvious step to one skilled in the art, then you can check of Claim 115 and all of its dependent claims (116-122).

Claim 123. A nicotine salt liquid formulation in an electronic cigarette for generating an inhalable aerosol up on heating in the electronic cigarette, the formulation in the cigarette comprising a nicotine salt in a biologically acceptable liquid carrier wherein an acid used to form said nicotine salt is characterized by vapor pressure of about 20 mmHg to 200 mmHg at 200° C.

nicotine salt formulation: yes
electronic cigarette: yes
inhalable aerosol generated from nicotine salt: yes
aerosol heated by electronic cigarette: yes
biologically acceptable liquid carrier: yes
acid is used to form nicotine salt: yes
acid has pressure between 20 mmHg to 200 mmHg at 200° C: ???

The issue to address here is the pressure between 20 mmHg to 200 mmHg at 200° C. If you can find a reference for this and/or prove that it would be an obvious step to one skilled in the art, then you can check of Claim 123 and all of its dependent claims (124-130). If you can invalidate Claim 105, then Claim 123 would also become invalid.

Claim 131. A nicotine salt liquid formulation in an electronic cigarette for generating an inhalable aerosol up on heating in the electronic cigarette, the formulation in the cigarette comprising a nicotine salt in a biologically acceptable liquid carrier wherein an acid used to form said nicotine salt is further characterized by a melting point at least 40° C. lower than the operating temperature of the electronic cigarette, and at least a 50° C. difference between a melting point of the acid and a boiling point of the acid.

nicotine salt formulation: yes
electronic cigarette: yes
inhalable aerosol generated from nicotine salt: yes
aerosol heated by electronic cigarette: yes
biologically acceptable liquid carrier: yes
acid is used to form nicotine salt: yes
acid has melting point at least 40° C lower than electronic cigarette: ???
acid has melting point at least 50° C lower than its boiling point: ???

The issue to address here is the melting point and boiling point of the acid relative to the temperature of the electronic cigarette. If you can find a reference for this and/or prove that it would be an obvious step to one skilled in the art, then you can check of Claim 131 and all of its dependent claims (132-137). This is a broader claim than Claim 115, so if you can invalidate Claim 115, then Claim 131 would also become invalid.

In short, you only need to find Prior Art addressing the boiling point of the acid and the pressure of the acid in order to invalidate the entire application.

US 2015/0020824

Claim 1. A method of delivering nicotine to a user comprising deploying an electronic cigarette comprising a nicotine formulation comprising nicotine in a biologically acceptable liquid carrier, wherein operation of the electronic cigarette generates an inhalable aerosol, and wherein inhalation of the aerosol at a rate of about one inhalation per 30 seconds results in a nicotine plasma Tmax from about 3 min to about 8 min.

nicotine delivery: yes
electronic cigarette: yes
nicotine formulation: yes
biologically acceptable liquid carrier: yes
electronic cigarette generates inhalable aerosol: yes
inhalation of aerosol at rate of 1 per 30 seconds: ???
nicotine plasma Tmax between 3 min and 8 min: ???

Here, you need to find Prior Art regarding the rate of inhalation and the plasma Tmax. You might note that nicotine salts are not mentioned in this independent claim; however, it is mentioned in dependent Claim 6:

Claim 6. The method of claim 1, wherein the nicotine formulation comprises a nicotine salt comprising nicotine and an acid.

as well as its dependent Claims 7-13.

So, you either need to knock out Claim 1 or Claim 1+6 (essentially the same problem with the rate of inhalation).

Claim 14. A method of delivering nicotine to a user comprising deploying an electronic cigarette comprising a nicotine salt formulation comprising a nicotine salt in a biologically acceptable liquid carrier, wherein

  • a. operation of the electronic cigarette generates an inhalable aerosol,
  • b. inhalation of the aerosol at a rate of about one inhalation per 30 seconds results in a nicotine plasma Tmax from about 3 min to about 8 min,
  • c. the nicotine concentration is about 2% (w/w) to about 6% (w/w),
  • d. the nicotine salt comprises nicotine and an acid,
  • e. the nicotine formulation comprises monoprotonated nicotine, and
  • f. the acid does not decompose at room temperature and does not decompose at the operating temperature of the electronic cigarette.
nicotine delivery: yes
electronic cigarette: yes
nicotine salt formulation: yes
biologically acceptable liquid carrier: yes

electronic cigarette generates inhalable aerosol: yes
inhalation of aerosol at rate of 1 per 30 seconds: obvious?
nicotine plasma Tmax between 3 min and 8 min: ???

nicotine concentration between 2% (w/w) to 6% (w/w): obvious?
nicotine salt contains nicotine: yes
nicotine salt contains an acid: yes
nicotine salt contains monoprotonated nicotine: ???
acid does not decompose at room temperature: obvious?
acid does not decompose at operating temperature: obvious?

As you can see here, there are a few additional items to address. The claims here are getting narrower, which is a good thing because it serves to better constrain the scope of the patent to a particular formula. So, in addition to the other Prior Art (inhalation) you also need Prior Art on the stability of the acid from room temperature to operating temperature as well as the nicotine concentration, inhalation rate and Tmax.

Claim 17. A method of delivering nicotine to a user comprising deploying an electronic cigarette comprising a nicotine salt formulation comprising nicotine benzoate in a biologically acceptable liquid carrier, wherein

  • a. the nicotine concentration is from about 2% (w/w) to about 6% (w/w),
  • b. operation of the electronic cigarette generates an inhalable aerosol, and
  • c. inhalation of the aerosol at a rate of about one inhalation per 30 seconds results in a nicotine plasma Tmax from about 5 min to about 8 min.
nicotine delivery: yes
electronic cigarette: yes
nicotine salt formulation: yes
formulation contains nicotine benzoate: ???
biologically acceptable liquid carrier: yes

nicotine concentration between 2% (w/w) to 6% (w/w): obvious?
electronic cigarette generates inhalable aerosol: yes
inhalation of aerosol at rate of 1 per 30 seconds: obvious?
nicotine plasma Tmax between 5 min and 8 min: ???

By now, we have seen all of these clauses except for nicotine benzoate. You need to find prior art for that clause.

Claim 18. A cartridge for use with an electronic cigarette comprising a fluid compartment configured to be in fluid communication with a heating element, the fluid compartment comprising a nicotine formulation comprising nicotine in a biologically acceptable liquid carrier, wherein operation of the electronic cigarette generates an inhalable aerosol, and wherein inhalation of the aerosol at a rate of about one inhalation per 30 seconds results in a nicotine plasma Tmax from about 3 min to about 8 min.

cartridge for electronic cigarette: yes?
cartridge in fluid communication with a heating element: yes
nicotine formulation: yes
biologically acceptable liquid carrier: yes

nicotine concentration between 2% (w/w) to 6% (w/w): obvious?
electronic cigarette generates inhalable aerosol: yes
inhalation of aerosol at rate of 1 per 30 seconds: obvious?
nicotine plasma Tmax between 5 min and 8 min: ???

This one could be an easy target if you can find Prior Art for the nicotine plasma Tmax or claim obviousness to one skilled in the art.

I think that about covers it. This could use some additional discussion on the meaning of the plasma Tmax, pressure and melting points, but I hope that this sufficiently points out the remaining Prior Art that needs to be discovered. If you can cover all clauses of each individual independent claim with one or two references, then it should be trivial to invalidate all claims of both patent applications.

1

This is a really interesting issue.

In fact, reading these posts, it appears some manufacturers may already have produced such e-liquid.

If it can be demonstrated that a manufacturer definitely produced it before the priority date of the patent application, and made it available to the public (e.g., for sale), then that is strong 102(a)(1) invalidating prior art (unless that manufacturer is the same entity seeking the patent, in which a 1-year grace period may apply).

Generally, speculations by anonymous people on the Internet (who may not even possess a bachelor's in chemistry or an equivalent level of skill in the art) about the possible contents of proprietary formulations is not evidence. Especially when they are going by "gut feel" as their primary source of information:

Could be placebo effect, but my gut says it is not, it is a real difference, and thus should be explainable by simple chemistry descriptions.

(above quote from "Kurt", a "Quantum Vapyre" who mentions "nicotine salts" in his post on one of the linked pages in the question)

Nonetheless, would these discussions, had publicly, qualify as prior art to the patent referenced above?

They may be. Due to the lack of an actual description of success from including nicotine salts in a vaping formula, such "speculative" prior art can probably only be used in an "obvious to try" rationale. The big question is whether these statements instill "a reasonable expectation of success".

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.