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
Claim 1 is amended. Claims 6 and 7 are cancelled. Claims 8-12 are withdrawn. Claims 1-5 and 13-14 are presently examined.
Applicant’s arguments regarding the rejections on the grounds of nonstatutory double patenting have been fully considered and are persuasive. The rejections of 5/12/2026 are overcome.
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 Objections
Claim 1 is objected to because of the following informalities: There is no comma or other punctuation mark following the limitation “(d) recycling the extraction solvent from the vessel to the extraction chamber.” Appropriate correction is required.
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 returning the extraction solvent to a first extraction vessel, 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 extraction solvent is flowed through tobacco, then flowed through an entrapment solvent, where the extracting and removing occur simultaneously in separate vessels in a continuous manner (column 2, lines 20-33). 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). The extraction fluid is returned to the extraction solvent after it has become depleted of solute (column 8, lines 50-63).
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 process of Sun with the separate vessels and returning the extraction solvent 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 and a process that operates continuously and allows multiple steps to occur simultaneously.
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.
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) the cited references do not teach using two vessels and recycling the extraction solvent, (c) that Liang does not teach making the extraction solvent become subcritical by changing only the pressure, and (d) 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 do not address the newly relied upon teachings of Howell as set forth above.
Regarding (c), applicant cites paragraphs from a different embodiment of Liang. [0059] states that the pressure is reduced to 40 bar, while [0036] states that the pressure is reduced to ambient. One of ordinary skill in the art would recognize that Liang is disclosing multiple embodiments of how the conditions can be changed to obtain a subcritical fluid rather than teaching only turning the fluid subcritical by adjusting to ambient conditions. Furthermore, [0038] of Liang clearly introduces a new embodiment, and thus separates the embodiments of [0035]/[0036] and [0059].
Regarding (d), all examined claims, including the examined independent claim, are rejected as set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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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