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 .
Response to Amendment
This office action is in response to Applicant’s amendment filed 8/7/2025.
Claim 8 is cancelled.
Claims 1-7 and 9-16 are pending.
Response to Arguments
Applicant's arguments filed 8/7/2025 have been fully considered but they are not persuasive.
First, Applicant argues that none of the cited documents teach a tobacco material that is defibrated and that the cited references teach the tobacco fibers are retained which constitutes a teaching away from the claimed invention (p. 6). Applicant notes that the instant application explains that the process of defibrating means separating and releasing the fibers and removing them from the tobacco material (citing [0020]) (p. 6-7). Applicant notes that Endemann discloses that crushing stems and waste tobacco, removing the non-fiber portions, and then treating the remaining fibres with hot water to leave behind a fibrous or woody insoluble portion, which Applicant argues is opposite of defibrating and instead teaches selecting material comprising the fibres (p. 7).
The Examiner finds Applicant’s argument unpersuasive. Particularly, the Examiner respectfully disagrees that the that the fibrous residue in Endemann does not constitute a defibrated tobacco material.
The Examiner agrees with Applicant that the instant application defines the term “mechanically defibrating.” As Applicant has noted, the instant specification defines “mechanically defibrating” as “separating or releasing tobacco fibers in the uncooked tobacco raw material under the influence of processes such as cutting, tearing, grinding or similar processes where the raw material is subject to cutting, shearing or grinding forces, or a combination thereof” (p. 4, ll. 11-14). Moreover, the instant specification defines “a defibrated tobacco raw material” as a “material subjected to mechanical defibration as previously defined, comprising separated or released tobacco fibers” (p. 4, ll. 21-23). In other words, Applicant’s definition of “mechanically defibrating” merely requires separating tobacco fibers from an uncooked tobacco raw material.
First, the Examiner contends that Endemann discloses mechanically defibrating a raw tobacco material in accordance with Applicant’s definition by separating tobacco fibers in two steps. First, Endemann discloses cutting a raw tobacco material in the form of tobacco stems and waste into lengths of an inch (p. 1, ll. 16-18). This cutting of the tobacco material necessarily involves separating tobacco fibers into one inch lengths (e.g., a three inch piece of tobacco material comprising fibers will be separated into three separate tobacco material pieces comprising fibers). Second, Endemann discloses crushing the fibers, in either a dry condition (p. 1, ll. 34-35) or in a moistened condition (p. 1, ll. 20-25). Crushing the fibers in the moistened condition results in splitting and disintegrating the body of the tobacco stems and waste (p. 1, ll. 25-31). This splitting constitutes separating tobacco fibers from each other. Moreover, crushing fibers in the dry condition results in finely broken up and crumbled tobacco pieces (p. 1, ll. 21-25). The finely broken up tobacco also constitutes separating tobacco fibers from each other. Thus, Endemann discloses mechanically defibrating tobacco stems and waste because the fibrous residue of the tobacco fibers present in the stems and waste are separated into smaller pieces.
Second, the Examiner contends that Endemann discloses the same processes that disclosed in the instant specification that results in the defibrated tobacco. Applicant describes processes such as cutting and grinding to defibrate the raw tobacco material (see above). In another example, Applicant describes that 10 kg of tobacco raw material was defibrated by way of grinding in a pilot refiner (p. 14, l. 15). As mentioned above, Endemann discloses both cutting and crushing fibers, which is identical to Applicant’s described cutting and crushing of fibers. Therefore, Endemann discloses identical processes to the processes that Applicant uses that would be expected result in a fibrous residue that is defibrated according to Applicant’s definition.
Applicant further argues that neither Elliot nor Rainer teach defibrating or removing fibers from the tobacco plant (p. 7-8).
The Examiner has noted Applicant’s argument but finds it unpersuasive because neither Elliot nor Rainer are relied upon to teach mechanically defibrating a tobacco raw material. Rather, Endemann is relied for such an aspect (see above).
Applicant notes that inclusion of the defibrating step provides some advantages relating to dewatering and drainage, and the bleaching efficiency of the process (citing [0020] and [0022]-[0023]) (p. 7). Applicant argues that the advantages of the defibration step, along with the other presented claimed steps, are not taught or suggested in any of the cited references (p. 8).
The Examiner has noted the advantages of the defibration step, but finds Applicant’s argument unpersuasive. “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” MPEP 2145(II). Here, the fact that Applicant has recognized advantages of dewatering and draining, and bleaching efficiency cannot render Endemann’s known disclosure of mechanically defibrating tobacco stems and waste nonobvious.
Second, Applicant argues that a person of ordinary skill in the art would consider the cited references do not provide any teaching that is useful for solving the problem that inventors of the present application seek to address (p. 8). Applicant argues that there is no motivation to combine these references unless they use impermissible hindsight (p. 8). Applicant further argues that because Endemann is directed to a “paper-pulp” as opposed to a tobacco for oral use, Endemann’s process would not retain any flavors (p. 9).
The Examiner finds Applicant’s argument unpersuasive.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to Applicant’s argument that Endemann’s paper-pulp process would not retain any flavors, there is nothing in the claim that requires using the produced tobacco material for forming an oral product or requires the produced tobacco material to have certain flavors. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
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 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 1-2 and 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Endemann (US 430516; of record) in view of Elliot (US 2264745; hereby Elliot ‘745; of record), or alternatively Rainer et al. (US 4388933; of record).
Regarding claim 1, Endemann discloses a process of producing paper-pulp form tobacco (title) comprising:
taking tobacco stems and waste (“uncooked tobacco raw material”), moistening the same with water, cutting the same into lengths of an inch and then crushing it my any suitable means, such as passing it through a crushing-machine to enable the crushing operation to be effective in splitting and disintegrating the body or structure of the tobacco stems (“defibrated tobacco raw material”; see also p. 1, ll. 45-47, disclosing a fibrous residue of tobacco) and waste so that their fibers will be exposed and the soluble portions are more readily removed (p. 1, ll. 16-21; “mechanically defibrating”); and
bleaching the tobacco in the usual manner of treatment of paper-stock for making it into paper-pulp (p. 1, ll. 68-70; “treating the defibrated raw material with at least one bleaching agent in one or more bleaching steps to produce a treated tobacco raw material”),
wherein a fibrous residue of tobacco is treated with a solution composed of some soluble neutral compound of alumina with an inorganic acid (“acid wash), for example, as sulphate of alumina, with water (p. 1, ll. 45-62; “defibrated tobacco raw material subjected to an acid wash before any of the bleaching steps”), and
wherein the tobacco stems and waste and the cut/crushed tobacco stems are not fermented (see Endemann, which lacks any description of fermenting the tobacco).
However, Endemann is silent as to at least one of the one or more bleaching steps is performed in a range of about pH 8-12. Specifically, Endemann does not disclose the details of the bleaching step.
Elliot ‘745 teaches a method of treating tobacco to improve its color (p. 1, col. 1, ll. 1-2) using an ammoniacal solution of hydrogen peroxide for the purpose of bleaching tobacco (p. 1, col. 1, ll. 3-5), wherein the hydrogen peroxide solution is cooled to 10 °C or below (p. 1, col. 1, ll. 22-33), and in one example, the ammoniacal solution of hydrogen peroxide has a pH of approximately 9.5 (p. 2, col. 1, ll. 10-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used Elliot ‘745’s ammoniacal solution of hydrogen peroxide at a pH of 9.5 and temperature of below 10 °C as the bleaching agent in Endemann’s process in order to obtain the predictable result bleaching the tobacco with the benefit of improving the tobacco’s color, aroma, and taste (Elliot ‘745; p. 1, col. 1, ll. 22-33).
Moreover, Rainer teaches an improved process for treating tobacco (see abstract) comprising spray treating rolled and cut tobacco particles with an aqueous hydrogen peroxide mixture containing at least one calcium compound and ammonium hydroxide at a pH in the range of 8 to 12 (col. 5, ll. 13-24), wherein such spray treatment acts to bleach the tobacco to a lighter color (col. 5, ll. 58-62).
Alternatively, it would have been obvious to said skilled artisan to have used Rainer’s mixture of hydrogen peroxide, calcium compound, and ammonium hydroxide in a pH range of 8 to 12 as the bleaching agent in Endemann’s process in order to obtain the predictable result of bleaching the tobacco to a lighter color (Rainer; col. 5, ll. 58-62) with the additional benefit of increasing the filling capacity of the tobacco while also offering economical benefits (Rainer; col. 3, l. 50-col. 4, l. 2).
Regarding claim 2, modified Endemann discloses the bleaching agent is hydrogen peroxide (Elliot ‘745, p. 1, col. 1, ll. 22-33; Rainer, col. 5, ll. 13-24).
Regarding claim 13, modified Endemann discloses the tobacco material is bleached according to the process of claim 1 above.
Regarding claims 14-15, regarding the claim limitations “wherein the bleached tobacco raw material has an ISO brightness that is not less than about 40%” and “wherein said ISO brightness remains substantially unaffected when the bleached tobacco raw material is subjected to fluid having pH of about pH 7 to about pH 12,” modified Endemann inherently discloses these limitation because the tobacco material is produced by an identical or substantially identical process to the claimed invention (as claimed in claims 1 and 13). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or a produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” See MPEP 2112.01(I).
Claim 3-5, 7, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Endemann in view of Elliot ‘745 or Rainer as applied to claim 1 above, and further in view of Delling (US 1437095; of record).
Regarding claims 3-5, 7, and 16, modified Endemann discloses .the process as discussed above with respect to claim 1, including bleaching the tobacco with the solution of hydrogen peroxide (Elliot ‘745, p. 1, col. 1, ll. 22-33; Rainer, col. 5, ll. 13-24).
However, modified Endemann is silent as to further treating the treated tobacco raw material with at least one second bleaching agent selected from the group consisting of: Cl2,ClO2, NaOCl, Cl2O, O2, O3, Na2S2O4, potassium peroxymonosulfate, dimethyldioxirane, peroxides, peroxy acids, enzymes, and combinations thereof, wherein the second bleach step is after the first of the one or more bleaching steps.
Delling teaches a process of bleaching tobacco (title) comprising subjecting the tobacco leaf to two treatments, first with hydrogen peroxide (see claim 3) and then with hydrogen peroxide in conjunction with a suitable acid (“treating…with at least one second bleaching agent,” “the at least one second bleaching agent is…peroxides,” and “wherein the treatment of the treated raw material with at least one second bleaching agent is in a second bleach step after the first of the one or more bleaching steps”) (p. 1, ll. 13-18; see also claim 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have applied the second hydrogen peroxide in conjunction with a suitable acid as in Delling as a second subsequent bleaching step to the process of modified Endemann in order to obtain the predictable result of improving the process of bleaching for the purpose of imparting a lighter hue to darker tobacco leaves by preventing the leaf from gradually returning to its darker hue with the second treatment of hydrogen peroxide (Delling; p. 1, ll. 8-12, 19-25).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Endemann in view of Elliot ‘745 or Rainer as applied to claim 1 above, and further in view of Li (CN 1072071 A; of record; see machine translation).
Regarding claim 6, modified Endemann discloses the method as discussed above with respect to claim 1, including bleaching the tobacco in the usual manner of treatment of paper-stock for making it into paper-pulp (p. 1, ll. 68-70).
However, modified Endemann is silent to the at least one bleaching agent is peroxyacetic acid.
Li teaches a method of improving the decoloring agent (Paragraph 1), the method uses decoloring agents containing hydrogen peroxide, peracetic acid (equivalent to peroxyacetic acid), and malic acid to decolorize (Paragraph 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the bleaching agent to be peracetic acid as in of Li for the bleaching process of Endemann in order to achieve the predictable result of decolorizing the tobacco (Li; paragraph 5) with the benefit of improving the color of the tobacco (Li; Paragraph 3).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Endemann in view of Elliot ‘745 or Rainer and Delling as applied to claim 3 above, and further in view of Kotonen et al. (WO 2005/064074; of record).
Regarding claim 9, modified Endemann discloses the method as discussed above with respect to claim 3, including the second bleaching step (Delling; p. 1, ll. 13-18).
However, modified Endemann is silent as to subjecting the treated tobacco raw material to a chelation treatment to remove a metal before treated tobacco raw material is treated with said at least one second bleaching agent.
Kotonen teaches a process for removing interfering substances in the production of a mechanical pulp (title), the method comprising impregnating a chopped lignocellulosic material with a solution containing a peracid (page 4, lines 15-20) such as peracetic acid (Page 5, lines 30-32; interpreted as said at least one bleaching agent), and preferably adding a chelating agent into the impregnation (Page 6, lines 25-30), and then iv) bleaching the pulp (Page 8, lines 1-16).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the known method of Endemann such that the tobacco pulp is impregnated with a peracid, adding a chelating agent to the impregnation, and then bleaching the pulp as in Kotonen in order to achieve the predictable result of removing extraction, electrolytes, and polyvalent metals from the lignocellulosic tobacco material with the benefit of using considerably smaller amounts of water (Kotonen; Page 8, lines 26-35).
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Endemann in view of Elliot ‘745 or Rainer as applied to claim 1 above, and further in view of Makovka (US 3126010; of record).
Regarding claim 10, modified Endemann discloses the method as discussed above with respect to claim 1.
However, Endemann is silent as to subjecting the defibrated tobacco raw material is subjected to a cooking step such that the defibrated tobacco raw material is treated with an acidic or neutral pH at a temperature range of from about 20-200°C for a total period of up to about 180 minutes with an aqueous solution comprising one or both of sulfite ion and bisulfite ion to produce a cooked tobacco raw material before treating with the bleaching agent.
Makovka teaches a method of making tobacco products (see Column 1, lines 10-13) wherein tobacco stalk are chipped or cut into small pieces (Column 6, lines 8-11) and then cooked or digested at an elevated temperature at a pressure above atmospheric, according to any well-known digesting method as sulphate, kraft, soda, neutral sulphite semi-chemical (interpreted as the neutral pH cooking step with sulfite and/or bisulfite), or sulphite (interpreted as the acidic pH cooking step with sulfite and/or bisulfite ions), modified for digesting of the tobacco stalks under super atmospheric pressure of 5-10 atm, at temperatures of 125-180 °C for 1-3 hours, and cooking liquor-to-stalk ratios of 2:1 to 8:1 (Column 5, lines 12-23), followed by bleaching the pulp (see claim 1).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to have applied the neutral sulfite or sulfite cooking process of Makovka to Endemann’s process because using the cooking process modifies the chemical reaction of delignification and leave the fibers with desirable properties (Makovka; col. 5, ll. 29-32) for a better cigarette paper made entirely form tobacco stalk fibers (Makovka; col. 1, ll. 56-61).
Regarding claim 11, modified Endemann discloses the cooking process (Makovka; col. 5, ll. 12-23) and the acid wash step (Endemann; p. 1, ll. 45-62) both occur before the one or more bleaching steps (see Endemann; p. 1, ll. 45-62, see Makovka; claim 1).
However, modified Endemann does not disclose that the cooked tobacco raw material is subjected to the acid wash step. Specifically, modified Endemann discloses both the acid wash step and the cooking step, but do not disclose their order.
It would have been obvious to said skilled artisan to have modified the order of the cooking step and the acid wash step because “selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” MPEP 2144.04(IV)(C).
Regarding claim 12, modified Endemann discloses the cooking treatment at a temperature of 125-180 °C for 1-3 hours (Makovka; Column 5, lines 12-23).
Regarding the claim limitation “treated at a temperature of from about 20°C to about 200°C for a period of about 120 minutes, and then a temperature of from about 150°C to about 200°C for a remaining part of the treatment,” it would have been obvious to said skilled artisan to have modified the temperatures of the cooking process and times in order to achieve a cooked tobacco material. “Where 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.” See MPEP 2144.05(II)(A).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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/SONNY V NGUYEN/Examiner, Art Unit 1755
/PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755