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
Claims 7-8 are cancelled. Claims 8-12 are withdrawn. Claims 1-5 and 13-14 are presently examined.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/10/2025 has been entered.
Specification
The use of the term Drambuie (page 5, line 14-page 6, line 4), which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Interpretation
The following special definitions in applicant’s specification have been noted and will be used wherever the terms appear:
Tobacco extract: Entrapment solvent containing tobacco components (page 5, lines 8-9).
Flavor: Material which may be used to create a desired taste or aroma in a product for adult consumers (page 5, lines 14-16).
Aerosol generating agent: An agent that promotes the generation of an aerosol on heating.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (US 2013/0239981) in view of Howell (US 8,887,737) and Robinson (US 7,726,320).
Regarding claim 1, Sun discloses supercritical extraction of fragrant substances in tobacco leaves (abstract). It is evident that the fragrant substances are different from nicotine since Sun discloses nicotine extraction separately [0008]. Tobacco shreds are placed into a vessel with supercritical fluid and extracted, the supercritical fluid is collected, and the fragrant substances are obtained after vaporizing the supercritical fluid (abstract), which evidently involves a transition to subcritical conditions since vapors are subcritical. Sun does not explicitly disclose (a) the collecting occurring in a vessel with an entrapment solvent that dissolves the fragrant substances and (b) the flavor modified tobacco being provided in a cartridge.
Regarding (a), Howell teaches a method of forming a liquor comprising tobacco solutes in which a solutes rich extraction solvent is flowed through an entrapment solvent to form cigarettes comprising the extracted tobacco solutes (abstract). The entrapment solvent absorbs the solutes in an exchange vessel because it has a large capacity for solute (column 8, lines 1-11). The entrapped solutes are added to cut tobacco filler stalk to provide flavor modified tobacco (column 11, lines 1-14).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the collecting of Sun with the entrapment solvent in a vessel of Howell. One would have been motivated to do so since Sun teaches collecting the tobacco fragrant substances and Howell teaches an entrapment solvent that has a high capacity for tobacco solutes that enables the extracted tobacco flavors to be applied to tobacco.
Regarding (b), Robinson teaches a smoking article processing tobacco in a cigarette (abstract) having a tobacco rod in the form of tobacco cut filler in contact with an aerosol forming material (column 7, lines 51-62) and a flavorful tobacco extract (column 11, lines 49-67, column 12, lines 1-38). The aerosol forming material and tobacco are positioned are positioned within a cartridge (column 6, lines 61-67, column 7, lines 1-2) to produce smoke having acceptable sensory and organoleptic properties (column 16, lines 3-23).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the tobacco filler of modified Sun with the cartridge of Robinson. One would have been motivated to do so since Robinson teaches that placing tobacco and tobacco flavor extract in a cartridge produces smoke having acceptable sensory and organoleptic properties.
Regarding claim 2, Sun discloses that the supercritical fluid is supercritical CO2 (abstract).
Regarding claim 3, Sun discloses that the extraction occurs at between 100 to 350 bar and at 35 to 70 °C (abstract).
Regarding claims 4 and 5, Howell teaches that the entrapment solvent is propylene glycol (column 1, lines 29-49), which is considered to meet the claim limitation of an aerosol generating agent.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sun (US 2013/0239981) in view of Howell (US 8,887,737) and Robinson (US 7,726,320) as applied to claim 1 above, and further in view of Liang (US 2014/0322078).
Regarding claim 13, modified Sun teaches all the claim limitations as set forth above. Modified Sun does not explicitly teach causing the vaporizing by lowering the pressure to be below the critical pressure of the carbon dioxide.
Liang teaches a supercritical flow device in which supercritical carbon dioxide is transitioned to a subcritical state by vaporization in which the pressure of the carbon dioxide is reduced but the temperature is unchanged [0059].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cause vaporization of supercritical carbon dioxide by lowering the pressure to a subcritical pressure but holding the temperature above the critical temperature of the carbon dioxide. One would have been motivated to do so since Liang teaches a suitable method to convert supercritical carbon dioxide into a vapor. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See MPEP § 2143, C.
Regarding claim 14, modified Sun teaches all the claim limitations as set forth above. Sun additionally discloses that the extraction occurs at 35 to 70 °C (abstract), a range which is entirely above the claimed 308 K. Modified Sun does not explicitly teach causing the vaporizing by lowering the pressure to be below the critical pressure of the carbon dioxide.
Liang teaches a supercritical flow device in which supercritical carbon dioxide is transitioned to a subcritical state by vaporization in which the pressure of the carbon dioxide is reduced to 40 bar but the temperature is unchanged [0059].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cause vaporization of supercritical carbon dioxide by lowering the pressure to a subcritical pressure but holding the temperature above the critical temperature of the carbon dioxide. One would have been motivated to do so since Liang teaches a suitable method to convert supercritical carbon dioxide into a vapor. The use of a known technique to improve similar devices (methods or products) in the same way is likely to be obvious. See MPEP § 2143, C.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,075,810 (hereafter referred to as Sintyureva ‘810) in view of Sun (US 2013/0239981).
Regarding claim 1, Sintyureva ‘810 claims a method of making a tobacco extract comprising providing tobacco and an entrapment solvent in a partitioned vessel, wherein the tobacco and entrapment are separated by a partition, flowing a supercritical extraction solvent through the vessel, wherein the extraction solvent and any dissolved substances can pass through the partition, whereby tobacco components are extracted from the tobacco into the extraction solvent and carried across the partition, wherein the extraction solvent contacts the entrapment solvent and the tobacco components are transferred from the extraction solvent into the entrapment solvent (claim 1). The vessel conditions are altered such that the extraction solvent is subcritical, thereby separating the extraction solvent and any remaining dissolved tobacco components, at least some of which are subsequently dissolved in the entrapment solvent (claim 3). The entrapment solvent containing dissolved tobacco components is provided in a cartridge, wherein the cartridge is configured for use in a smoking article (claim 1). Sintyureva ‘810 does not explicitly claim the tobacco components being different from tobacco.
Sun teaches supercritical extraction of fragrant substances in tobacco leaves (abstract). It is evident that the fragrant substances are different from nicotine since Sun discloses nicotine extraction separately [0008]. Tobacco shreds are placed into a vessel with supercritical fluid and extracted, the supercritical fluid is collected, and the fragrant substances are obtained after vaporizing the supercritical fluid (abstract), which evidently involves a transition to subcritical conditions since vapors are subcritical.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the extraction of Sintyureva ‘810 with the fragrant substance extraction of Sun. One would have been motivated to do so since Sintyureva ‘810 claims extracting tobacco components and Sun teaches a method of extracting fragrant substances that are different from tobacco.
Regarding claim 2, Sintyureva ‘810 claims the extraction solvent comprising carbon dioxide (claim 4).
Regarding claim 3, Sintyureva ‘810 claims the temperature being in the range of about 308-473 K and the pressure being in the range of about 8-85 MPa (claim 5).
Regarding claim 4, Sintyureva ‘810 claims the entrapment solvent comprising an aerosol generating agent (claim 6).
Regarding claim 5, Sintyureva ‘810 claims the entrapment solvent comprising a polyol (claim 7).
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,329,189 (hereafter referred to as Digard) in view of Sun (US 2013/0239981).
Regarding claim 1, Digard claims contacting tobacco with an extraction solvent such that tobacco flavor and/or aroma components are extracted from the tobacco into the solvent, separating the residual tobacco solids from the supercritical extraction solvent containing tobacco components, and exposing the extraction solvent containing tobacco components to conditions in a vessel at which the extraction solvent is subcritical, thereby releasing the tobacco components from the extraction solvent such that they are dissolved in the entrapment solvent (claim 1). The entrapment solvent containing dissolved tobacco components in a cartridge, wherein the cartridge is configured for use in a smoking article (claim 8). Digard does not explicitly claim the tobacco components excluding nicotine.
Sun teaches supercritical extraction of fragrant substances in tobacco leaves (abstract). It is evident that the fragrant substances are different from nicotine since Sun discloses nicotine extraction separately [0008]. Tobacco shreds are placed into a vessel with supercritical fluid and extracted, the supercritical fluid is collected, and the fragrant substances are obtained after vaporizing the supercritical fluid (abstract), which evidently involves a transition to subcritical conditions since vapors are subcritical.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the extraction of Digard with the fragrant substance extraction of Sun. One would have been motivated to do so since Digard claims extracting tobacco components and Sun teaches a method of extracting fragrant substances that are different from tobacco.
Regarding claim 2, Digard claims that the extraction solvent comprises carbon dioxide (claim 4).
Regarding claim 3, Diagrd claims that the temperature is in the range of about 308-473K and the pressure is in the range of about 8-85 MPa (claim 5).
Regarding claim 4, Digard claims that the entrapment solvent comprises an aerosol generating agent (claim 1).
Regarding claim 5, Digard claims that the entrapment solvent comprises a polyol (claim 6).
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,593,864 (hereafter referred to as Sintyureva ‘864) in view of Sun (US 2013/0239981).
Regarding claim 1, Sintyureva ‘864 claims contacting tobacco with an extraction solvent in a first chamber such that tobacco components including flavors and/or aromas are extracted from the tobacco into the extraction solvent, wherein the extraction solvent is a supercritical fluid in the first chamber, passing the extraction containing solvent containing tobacco components along a line towards a second chamber, wherein the tobacco components are released from the extraction solvent by transfer to subcritical conditions and are dissolved in the entrapment solvent (claim 1). The entrapment solvent containing dissolved tobacco components is provided in a cartridge (claim 10) that is configured for use in a smoking article (claim 11). Sintyureva ‘864 does not explicitly claim the tobacco components excluding nicotine.
Sun teaches supercritical extraction of fragrant substances in tobacco leaves (abstract). It is evident that the fragrant substances are different from nicotine since Sun discloses nicotine extraction separately [0008]. Tobacco shreds are placed into a vessel with supercritical fluid and extracted, the supercritical fluid is collected, and the fragrant substances are obtained after vaporizing the supercritical fluid (abstract), which evidently involves a transition to subcritical conditions since vapors are subcritical.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the extraction of Sintyureva ‘864 with the fragrant substance extraction of Sun. One would have been motivated to do so since Sintyureva ‘864 claims extracting tobacco components and Sun teaches a method of extracting fragrant substances that are different from tobacco.
Regarding claim 2, Sintyureva ‘864 claims the extraction solvent comprising carbon dioxide (claim 2).
Regarding claim 3, Sintyureva ‘864 claims the temperature being in the range of about 308-473K and the pressure being in the range of about 8-85 MPa (claim 3).
Regarding claim 4, Sintyureva ‘864 claims the entrapment solvent comprising an aerosol generating agent (claim 6).
Regarding claim 5, Sintyureva ‘864 claims the entrapment solvent comprising a polyol (claim 7).
Claims 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 12-14 of copending Application No. 16/614,276 (hereafter referred to as Sinyureva ‘276) in view of Sun (US 2013/0239981).
Regarding claim 1, Sintyureva ‘276 claims a method of making a tobacco extract comprising contacting tobacco with an extraction solvent such that tobacco components are extracted from the tobacco into the solvent, wherein the extraction solvent comprises a supercritical fluid, separating residual tobacco solids from the supercritical extraction containing tobacco components by transferring the supercritical extraction solvent to a vessel, exposing the extraction solvent containing the tobacco components to conditions in the vessel at which the extraction solvent is subcritical, thereby releasing the tobacco components from the extraction solvent, and then flowing an entrapment solvent through the vessel, which extraction solvent dissolves the tobacco components (claim 1). The entrapment solvent containing dissolved tobacco components is provided in a cartridge, wherein the cartridge is considered for use in a smoking article (claim 6). Sintyureva ‘276 does not explicitly claim the tobacco components being different from nicotine.
Sun teaches supercritical extraction of fragrant substances in tobacco leaves (abstract). It is evident that the fragrant substances are different from nicotine since Sun discloses nicotine extraction separately [0008]. Tobacco shreds are placed into a vessel with supercritical fluid and extracted, the supercritical fluid is collected, and the fragrant substances are obtained after vaporizing the supercritical fluid (abstract), which evidently involves a transition to subcritical conditions since vapors are subcritical.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the extraction of Sintyureva ‘276 with the fragrant substance extraction of Sun. One would have been motivated to do so since Sintyureva ‘276 claims extracting tobacco components and Sun teaches a method of extracting fragrant substances that are different from tobacco.
Regarding claim 2, Sintyureva ‘276 claims the supercritical fluid comprising carbon dioxide (claim 2).
Regarding claim 3, Sintyureva ‘276 claims the temperature being in the range of about 308-473K and the pressure being in the range of 8-85 MPa (claim 3).
Regarding claim 4, Sintyureva ’276 claims the entrapment solvent comprising an aerosol generating agent (claim 1).
Regarding claim 5, Sintyureva ‘276 claims the entrapment solvent comprising a polyol (claim 4).
Regarding claim 6, Sintyureva ‘276 claims the tobacco components including one or more of nicotine and tobacco aromas and flavors (claim 5).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that any modification to Howell that would result in the carbon dioxide being exposed to subcritical conditions at any point would constitute an impermissible modification of the principle of operation of Howell, (b) that Robinson does not relate to a method of making a tobacco extract, and the remaining references do not relate to downstream uses of the tobacco extract, and (c) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the Office action did not propose making any modification to Howell. Rather the Office proposed to modify Sun in view of Howell. Arguments regarding changing the principle of operation of reference or modifying it in a way that would render it unsatisfactory for its intended purpose are about modifications to the primary reference. See MPEP § 2143.01 V. Therefore, applicant’s arguments are irrelevant since Howell is not relied upon as a primary reference.
Regarding (b), applicant’s arguments are based on the idea, put forth by applicant, that one of ordinary skill would have no motivation to take the products of a tobacco processing method and prepare them into a product. However, one of ordinary skill in the art would understand that tobacco products for smoking are not usually distributed as a collection of leaves or substrates that a user smokes directly, but are packaged into various products such as cigarettes, cigars, smokeless tobacco forms, or electronic cigarettes. One of ordinary skill in the art, indeed most human beings living on planet Earth today, have seen such products for sale in a variety of locations such as convenience stores, gas stations, train stations, dedicated tobacco stores, grocery stores, drug stores, and innumerable other possible retail locations. Not only would one of ordinary skill in the art be aware of these varied retail locations due to general activities, but he is also likely to be directly involved in the manufacture of such products for sale, since companies engaged in such business are exactly the companies that employ persons of ordinary skill in the tobacco art. Therefore one of ordinary skill in the art would immediately understand the connection between tobacco extracts and commonly sold tobacco products, and be motivated to look to known methods of preparing products that can be sold through these innumerable distribution channels, and would therefore have been motivated to look to Robinson as a suitable product for sale in the form of a cartridge.
Regarding (c), all examined claims, including the examined independent claim, are rejected as set forth above.
Regarding the double patenting rejections, applicant argues that the standard for determining obviousness is different from the standard for determining whether double patenting exists. However, MPEP § 804 II B 3 states that the analysis for a nonstatutory double patenting rejection is analogous to a failure to meet the non-obviousness requirement with the exception that the reference application is used instead of a primary reference. In this case the modifications of the reference applications are based on the principles underlying obviousness rejections, and the double patenting rejections are therefore maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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