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 1-6 and 12-14 are allowed. Claims 7-9 are withdrawn. Claims 10 and 11 are amended. Claims 1-6 and 10-14 are presently examined.
Applicant’s arguments regarding the objections to the drawings have been fully considered and are persuasive. The objections of 3/17/2026 are withdrawn.
Applicant’s arguments regarding the objection to the specification have been fully considered and are persuasive. The objection of 3/17/2026 is withdrawn.
Applicant’s arguments regarding the objection to the claims have been fully considered and are persuasive. The objection of 3/17/2026 is withdrawn.
Applicant’s arguments regarding the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections of 3/17/2026 are overcome.
Applicant’s arguments regarding the rejections under 35 USC 101 have been fully considered and are persuasive. The rejections of 3/17/2026 are overcome.
Information Disclosure Statement
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.
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.
Claim Interpretation
Regarding claims 10 and 11, the claims require the limitation “a tobacco extract obtainable by the method according to claim 1 to generate an inhalable aerosol,” which is a statement regarding the intended use of the claimed tobacco extract. Although the instant claims are method claims, the claims are directed to a method of using not product, not a method of making a product. The limitations regarding the method of making the product will therefore be considered as product-by-process limitations that do not necessarily limit the claim. The determination of patentability is based upon the product or apparatus structure itself. Patentability does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP § 2113 I. Therefore, for the purposes of this Office action, the claims will be interpreted as if they required a product used to generate an inhalable aerosol including any tobacco extract.
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 10 and 11 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 10, the claim attempts to claim a process of using without setting forth any steps involved in the process of using. The claim is therefore indefinite since there is no guidance as to how the use is practiced. See MPEP § 2173.05(q).
Regarding claim 11, the claim attempts to claim a process of using without setting forth any steps involved in the process of using. The claim is therefore indefinite since there is no guidance as to how the use is practiced. See MPEP § 2173.05(q).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeuchi (US 2004/0226568).
Regarding claim 10, Takeuchi discloses a flavoring substance that includes a tobacco extract that generates a flavorant when heated by a heat generating member [0027].
Regarding claim 11, Takeuchi discloses that the flavoring substance is contained in a smoking article [0010].
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.
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.
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
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