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 10 and 11 are rejoined. Claims 1-6 and 10-14 are presently examined. Claims 1-6 and 12-14 are allowed.
Applicant’s arguments regarding the rejections under 35 USC 103 have been fully considered and are persuasive. The rejections of 11/14/2025 are overcome.
Election/Restrictions
Claims 1-6 and 12-14 are allowable. The restriction requirement between inventions I-V, as set forth in the Office action mailed on 1/18/2022, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 1/18/2022 is partially withdrawn. Claims 10 and 11, directed to use of a tobacco extract, are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim. However, claims 7-9, directed to a tobacco extract, a cartridge containing a tobacco extract, and a smoking article containing a tobacco extract, remain withdrawn from consideration because they do not require all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Information Disclosure Statement
The information disclosure statement filed 3/21/2022 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered. Specifically, only a partial copy of WO 2018/210677 is provided.
The information disclosure statement filed 7/25/2022 fails to comply with 37 CFR 1.98(a)(1), which requires the following: (1) a list of all patents, publications, applications, or other information submitted for consideration by the Office; (2) U.S. patents and U.S. patent application publications listed in a section separately from citations of other documents; (3) the application number of the application in which the information disclosure statement is being submitted on each page of the list; (4) a column that provides a blank space next to each document to be considered, for the examiner’s initials; and (5) a heading that clearly indicates that the list is an information disclosure statement. The information disclosure statement has been placed in the application file, but the information referred to therein has not been considered. Specifically, only a partial copy of WO 2018/210677 is provided.
The information disclosure statement filed 3/21/2022 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no copies of Application and File History for U.S. Application No. 16/614,111, Application and File History for U.S. Application No. 16/614,119, Application and File History for U.S. Application No. 16/614,267, Application and File History for U.S. Application No. 16/614,269, Application and File History for U.S. Application No. 16/614,270, and Application and File History for U.S. Application No. 16/614,274.
The information disclosure statement filed 7/25/2022 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no copies of Application and File History for U.S. Application No. 16/614,111, Application and File History for U.S. Application No. 16/614,119, Application and File History for U.S. Application No. 16/614,267, Application and File History for U.S. Application No. 16/614,269, Application and File History for U.S. Application No. 16/614,270, and Application and File History for U.S. Application No. 16/614,274.
The information disclosure statement filed 11/17/2022 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no copies of Application and File History for U.S. Application No. 16/614,111, Application and File History for U.S. Application No. 16/614,119, Application and File History for U.S. Application No. 16/614,267, Application and File History for U.S. Application No. 16/614,269, Application and File History for U.S. Application No. 16/614,270, and Application and File History for U.S. Application No. 16/614,274 are provided.
The information disclosure statement filed 5/16/2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no copies of Application and File History for U.S. Application No. 16/614,111, Application and File History for U.S. Application No. 16/614,119, Application and File History for U.S. Application No. 16/614,267, Application and File History for U.S. Application No. 16/614,269, Application and File History for U.S. Application No. 16/614,270, and Application and File History for U.S. Application No. 16/614,274 are provided. A partial copy of WO 2018210677 A1 is provided, however, the full copy must be provided.
Drawings
The drawings were received on 11/1/2023. These drawings are not acceptable since they introduce new matter into the disclosure in the form of various views of a mechanical component that is not described by applicant’s original filing.
Specification
The use of the term Drambuie (page 5, line 23), 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.
Content of Specification
(a) TITLE OF THE INVENTION: See 37 CFR 1.72(a) and MPEP § 606. The title of the invention should be placed at the top of the first page of the specification unless the title is provided in an application data sheet. The title of the invention should be brief but technically accurate and descriptive, preferably from two to seven words. It may not contain more than 500 characters.
(b) CROSS-REFERENCES TO RELATED APPLICATIONS: See 37 CFR 1.78 and MPEP § 211 et seq.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT: See MPEP § 310.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT. See 37 CFR 1.71(g).
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM: The specification is required to include an incorporation-by-reference of electronic documents that are to become part of the permanent United States Patent and Trademark Office records in the file of a patent application. See 37 CFR 1.77(b)(5) and MPEP § 608.05. See also the Legal Framework for Patent Electronic System posted on the USPTO website (https://www.uspto.gov/sites/default/files/documents/2019LegalFrameworkPES.pdf) and MPEP § 502.05
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR. See 35 U.S.C. 102(b) and 37 CFR 1.77.
(g) BACKGROUND OF THE INVENTION: See MPEP § 608.01(c). The specification should set forth the Background of the Invention in two parts:
(1) Field of the Invention: A statement of the field of art to which the invention pertains. This statement may include a paraphrasing of the applicable U.S. patent classification definitions of the subject matter of the claimed invention. This item may also be titled “Technical Field.”
(2) Description of the Related Art including information disclosed under 37 CFR 1.97 and 37 CFR 1.98: A description of the related art known to the applicant and including, if applicable, references to specific related art and problems involved in the prior art which are solved by the applicant’s invention. This item may also be titled “Background Art.”
(h) BRIEF SUMMARY OF THE INVENTION: See MPEP § 608.01(d). A brief summary or general statement of the invention as set forth in 37 CFR 1.73. The summary is separate and distinct from the abstract and is directed toward the invention rather than the disclosure as a whole. The summary may point out the advantages of the invention or how it solves problems previously existent in the prior art (and preferably indicated in the Background of the Invention). In chemical cases it should point out in general terms the utility of the invention. If possible, the nature and gist of the invention or the inventive concept should be set forth. Objects of the invention should be treated briefly and only to the extent that they contribute to an understanding of the invention.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S): See MPEP § 608.01(f). A reference to and brief description of the drawing(s) as set forth in 37 CFR 1.74.
(j) DETAILED DESCRIPTION OF THE INVENTION: See MPEP § 608.01(g). A description of the preferred embodiment(s) of the invention as required in 37 CFR 1.71. The description should be as short and specific as is necessary to describe the invention adequately and accurately. Where elements or groups of elements, compounds, and processes, which are conventional and generally widely known in the field of the invention described, and their exact nature or type is not necessary for an understanding and use of the invention by a person skilled in the art, they should not be described in detail. However, where particularly complicated subject matter is involved or where the elements, compounds, or processes may not be commonly or widely known in the field, the specification should refer to another patent or readily available publication which adequately describes the subject matter.
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i) - (p).
(l) ABSTRACT OF THE DISCLOSURE: See 37 CFR 1.72 (b) and MPEP § 608.01(b). The abstract is a brief narrative of the disclosure as a whole, as concise as the disclosure permits, in a single paragraph preferably not exceeding 150 words, commencing on a separate sheet following the claims. In an international application which has entered the national stage (37 CFR 1.491(b)), the applicant need not submit an abstract commencing on a separate sheet if an abstract was published with the international application under PCT Article 21. The abstract that appears on the cover page of the pamphlet published by the International Bureau (IB) of the World Intellectual Property Organization (WIPO) is the abstract that will be used by the USPTO. See MPEP § 1893.03(e).
(m) SEQUENCE LISTING: See 37 CFR 1.821 - 1.825 and MPEP §§ 2421 - 2431. The requirement for a sequence listing applies to all sequences disclosed in a given application, whether the sequences are claimed or not. See MPEP § 2422.01.
The disclosure is objected to because of the following informalities: There is no Brief Description of the Several Views of the Drawings regarding the drawings filed 11/1/2023. Appropriate correction is required.
Claim Objections
Claim 10 is objected to because of the following informalities: The claim does not begin with the definite article “the”. Appropriate correction is required.
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 9 and 10 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.
Regarding claim 9, the claim recites the limitation “a method according to claim 1.” It is unclear whether this limitation refers to the method of claim 1 or to a new method, rendering the claim indefinite. For the purposes of this Office action, the limitation will be interpreted as if it referred to the method of claim 1. Claim 10 is indefinite by dependence.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 9 and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because they are directed to a use.
Allowable Subject Matter
Claims 1-6 and 12-14 are allowed. The following is an examiner’s statement of reasons for allowance:
Fiore (US 4,176,668) teaches a process in which isopropanol is used as a solvent (column 6, lines 59-68, column 7, lines 1-7) in which the isopropanol is charged in a tank in a required amount (column 9, lines 35-36). Zinc chloride is then dissolved in the isopropanol. The tank is rinsed, which is considered to be equivalent to the claimed washing, with isopropanol following the dissolving to ensure that the zinc chloride is completely transferred (column 9, lines 37-42).
Taylor (US 2007/0137663) teaches a method of extracting sucrose esters from Oriental tobacco in which the tobacco material is contacted with a supercritical fluid to separate esters from tobacco and into the supercritical fluid (abstract). The resulting extract can be used as a flavor additive for tobacco materials used in smoking articles (abstract). The extract is dissolved in a solvent and applied as a liquid [0011] after it is separated from the supercritical fluid by evaporation of the supercritical fluid [0039]. It is evident that the evaporated fluid becomes subcritical since evaporation transforms a substance into the gas phase, which is a subcritical phase of matter. The extraction step is performed in a vessel [0037].
Osuga (US 11,330,834) teaches a method of manufacturing a flavor source containing an inhaling flavor component (abstract) in which tobacco raw material (figure 1, reference numeral 50) is heated to release a flavor component into the vapor phase (column 7, lines 55-60). The released component (figure 1, reference numeral 61) is guided by a pipe (figure 2, reference numeral 22) to a trap solvent (column 6, lines 23-33, figure 2, reference numeral 70) that is contained within a container (column 6, lines 40-42, figure 2, reference numeral 21), which is considered to meet the claim limitation of a second vessel. Residual components are guided out from the container (column 6, lines 40-42, figure 6, reference numeral 63). The trap solvent is a polyol that is used as a flavor source from which an aerosol is generated (column 13, lines 14-24), indicating that the polyol is an aerosol generating agent.
Response to Arguments
Regarding the information disclosure statements, applicant’s arguments have been fully considered. Some of the notations have been removed in light of applicant’s arguments, however, upon consideration, some of the notations are nevertheless correct and are therefore maintained.
Regarding the objections to the drawings and the specification, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues that the drawings filed 11/1/2023 should have been held non compliant and not entered, however, there is no provision of 37 CFR 1.121(d) that was violated by the drawings amendment, unlike the violations of 37 CFR 1.121(b) and 37 CFR 1.121(c) identified in the specification and claims amendments of 11/1/2023. Furthermore, the Office action of 3/22/2024 indicated that the drawings had been accepted. Applicant is advised to review 37 CFR 1.59 and MPEP § 724 for details about expungement of documents previously filed in an application.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at 571-270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755