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 .
Status of the Claims
Claims 1-6, 14 and 17-30 are pending.
Claims 4, 5, 20 and 23-27 remain withdrawn.
Response to Arguments
Applicant's arguments filed 3/4/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
The Office submits that Chapman as teaches a tobacco pouched product with a pouch comprising a non-woven web comprising a "plurality of fiber types," wherein a first portion of fibers comprises viscose fibers and a second portion of fibers comprises cotton fibers. The Office admits that Chapman does not teach that at least 80% of the fibers by weight are the "first portion" of fibers, but points to Bushman as allegedly providing motivation for such a weight percentage of the viscose fibers. Applicant traverses this rejection.
Applicant respectfully submits that Chapman provides very general disclosure of the fleece materials, noting that, e.g., cellulosic fibers (e.g., regenerated cellulose known as rayon or viscose fibers) can be used and goes on to later indicate that the fabric can be formed of a single fiber type or may be formed of a plurality of fiber types, noting "[f]urther non-limiting examples of the types of fibers that can be used in forming the nonwoven web" as including, e.g., those made of wool, cotton, etc. Chapman itself thus provides minimal motivation, at best, to modify the fleece material of the disclosed pouched products in any specific manner.
Examiner Response A:
The Examiner respectfully disagrees. The motivation to modify Chapman would not be taught by Chapman itself, but would be taught by another reference.
Applicant Argument B:
Additionally, one of ordinary skill in the art would not reasonably consider modifying
Chapman based specifically on the disclosure of Bushman as proposed. Applicant respectfully notes that, while Chapman describes both beverage pouches adapted for brewing or steeping (e.g., tea bags) and oral pouched product designed for insertion into the oral cavity, the Office relies on the relevant disclosure of oral pouched products in Chapman as allegedly serving as a starting point to guide one of ordinary skill in the art to the claimed subject matter (which relates to a pouched product "adapted for use in a user's oral cavity"). To modify such an oral pouched product as disclosed in Chapman, one of ordinary skill in the art would not turn to Bushman, which relates only to tea-bag and coffee-bag products (i.e., non-oral products, which are designed to be steeped in hot water, and not designed for insertion within the mouth of the user). Bushman does not mention "oral" anywhere in the disclosure, and the products provided therein are designed to "suit a variety of containers or quantities of material to be filtered, such as but not limited to coffee, tea, spices, herbs, hops, nut milk or other substances.. configured to steep any of these materials or others in a fluid, such as by way of example and not limitation, hot, cold, or lukewarm water or milk." There is no teaching or suggestion that the principles described in Bushman would be applicable instead to oral pouched products.
As such, one of skill in the art is provided with any motivation to modify an oral pouched product as described in Chapman to employ features of pouch materials (as described in Bushman) that are relevant to tea-bag and coffee-bag products (which materials are not indicated to be advantageous or even useful in the context of an oral pouched product).
Further, one of skill in the art would have no reasonable expectation of success in making the proposed modification to Chapman's oral products. One of skill in the art is aware that there are many considerations that go into determining that a product is suitable and safe for placing directly within a consumer's oral cavity, which are not necessarily the same types of considerations that go into determining that a product can be suitably used e.g., to prepare drinks by soaking the product within a fluid (where that product itself is not to be orally used). In addition, the environment in the oral cavity is different than the environment of hot steeping water (or other liquids as referenced above) for which the pouched products of Bushman are designed. Suitable fibers for preparing nonwoven filters for these two disparate purposes would not be understood by one of ordinary skill in the art to be readily interchangeable. Based on the different functions served by the referenced pouch material of these two references (i.e., one to release components from the interior cavity of the pouch within the oral cavity and one to release components from the interior cavity of the pouch within a liquid, wherein that liquid is then designed for ingestion), one of skill in the art would not reasonably be led to pluck components taught to be relevant in Bushman's steepable bags and incorporate them within the pouch material of Chapman's oral products.
Examiner Response B:
The Examiner respectfully disagrees. The Examiner defers to the Patent Board Decision for this application dated 8/18/2025, pages 3-4, which addresses a very similar argument, specifically “In particular, Appellant argues Sebastian relates to oral products, while Bushman relates to tea-bag and coffee-bag products, which are not designed for insertion within the mouth of the user. Appeal Br. 5. Appellant argues Bushman does not mention "oral" at all. Id. Appellant argues that although Sebastian teaches an embodiment directed to a beverage pouch adapted for brewing or steeping, that use is fundamentally different than the smokeless tobacco product embodiments taught by Sebastian. Reply Br. 2. Appellant argues an ordinarily skilled artisan starting with Sebastian's oral products embodiment would not turn to Bushman's tea-bag or coffee-bag products. Id. at 2-3. Appellant argues that an ordinarily skilled artisan would have no reasonable expectation of success in combining Bushman's teachings with Sebastian's oral product embodiment. Appeal Br. 6-7. Specifically, Appellant contends that the considerations that go into determining that a product is suitable and safe for placing directly within a consumer's oral cavity are not necessarily the same considerations that go into determining that a product can be suitably used as a coffee bag or tea bag. Id.” The Board stated “Appellant has not persuaded us the Examiner erred.”
Applicant Argument C:
Furthermore, even if one of ordinary skill in the art were to turn to Bushman to modify the oral pouched products of Chapman, he or she would not reasonably arrive at the claimed subject matter. The nonwoven webs provided in Bushman are described as comprising a first material, a second material, and a third material. The disclosed first, second, and third material are combined in various ratios according to the teachings of Bushman, e.g., 60%/30%/10% first/second/third material; 70%/20%/10% first/second/third material; 64%/24%/8%/4% first/second/third/fourth material; 64%/28%/8% first/second/third material; 68%/24%/8% first/second/third material; and 64%/24%/12% first/second/third material.
Applicant appreciates that the general disclosure of Bushman references "sisal" and
"natural viscose fibers" as "[n]on-limiting examples of the natural fibers or natural source materials used to comprise one or more naturally-derived fibers." Bushman does not mention sisal fibers any further in the disclosure thereof. Bushman does, however, make numerous additional mentions of viscose fibers. Every example employing viscose fibers specifically includes them in an amount of 25% by weight or less. For example, Bushman describes a specific fabric comprising polypropylene as the "first material," polyester (e.g., polyethylene terephthalate) as the "second material," and viscose fiber as the "third material." Notably, Bushman goes on to give example percentages of each such material in these embodiments, in which the maximum viscose fiber content is only 12%. In the Experimental section of the application, Bushman provides Example 1, which provides various fabrics comprising 55-68% polypropylene, 20-25% polyester, 8-25% viscose fiber, and 0- 4% of a natural fiber and Examples 2 and 3, which provide various fabrics comprising 55-68% polypropylene, 20-25% polyethylene terephthalate, 8-25% viscose fiber, and 0-4% of a natural fiber (Example 2) or another polyester (Example 3). While Applicant appreciates that examples are not necessarily limiting of the disclosure of a reference (as a reference "may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments"), the overall teachings of this reference would clearly have directed one of ordinary skill in the art to materials with relatively low viscose fiber contents.
One of ordinary skill in the art, considering the entirety of the teachings of Bushman, would not predictably arrive at a fabric comprising a significantly greater percentage (80% or more) of such fibers than provided in any example. As such, even considering the Chapman and Bushman references in combination, Applicant respectfully submits one of ordinary skill in the art would not predictably be led to a product comprising a nonwoven web, comprising fibers that specifically comprise both at least 80% by weight of a first portion of fibers selected from tobacco-derived viscose fibers, sisal fibers, corn silk fibers, long wood fibers, MCC fibers, and combinations thereof and a remainder (second portion) of fibers selected from wool fibers, cotton fibers, cellulosic fibers derived from a source other than wood or a plant of the Nicotiana species, protein fibers, and combinations thereof, all weights based on the total weight of the fibers. Applicant respectfully submits that there is insufficient guidance even in the combined reference teachings to guide one of skill in the art to this unique combination of fiber types within a fleece material. Applicant respectfully requests reconsideration and withdrawal of the rejection of claim 1 at least on this basis.
Examiner Response C:
The Examiner respectfully disagrees. The Applicant is arguing that the examples have a relatively low content of viscose fibers. However, Bushman teaches a wide range of combinations of fibrous materials including wherein all fibers of the non-woven are naturally derived fibers, a combination of first and second fibers, combinations of three or more fibers, and ranges from 1-99% of natural fibers if not all fibers are natural (¶ 0037-0042). Bushman teaches selecting a combination of natural fibers from a list including both fibers corresponding with applicant’s first group and fibers corresponding with applicant’s second group, providing no limits regarding the percent by weight of one relative to the other, and encouraging one of ordinary skill to utilize a variety of weights as evidenced by the broad disclosure.
While Bushman does not explicitly teach a first portion of fibers selected from the claimed group and a second portion of fibers selected from the claimed group in which at least 80% by weight of the fibers are the first portion, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize at least 80% or 90% by weight sisal or viscose fibers as well as some amount of cotton or wool fibers in the non-woven pouch of Bushman as Bushman teaches using a mixture of naturally-derived fibers for the non-woven including both a sisal or viscose fiber and a fiber corresponding with the second group of claimed fibers in which the non-woven is all or 99% naturally derived fibers presenting a reasonable expectation of success, selection of a particular materials such as viscose or sisal for a first fiber and cotton or wool for a second fiber presents selection by one of ordinary skill of fibers from a finite number of identified predictable solutions for the fiber and serves to use the fibers for their identified intended purpose as a naturally derived fiber in Bushman establishing predictable results. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007). The Applicant has not pointed to new or unexpected results that result from the claimed limitation.
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 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.
Claim(s) 1-3, 6, 17-19, 21, 22 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20160157515 (Chapman hereinafter) in view of US 20190335935 (Bushman hereinafter).
Regarding claims 1 and 28, Chapman teaches a tobacco pouched product, comprising: an outer water-permeable pouch defining a cavity; and, a composition comprising a water-soluble component, wherein the composition is situated within the cavity (abstract); wherein the outer water-permeable pouch comprises a nonwoven web comprising fibers (“fleece” pouch), the fibers comprising a first portion of fibers and a second portion of fibers (“plurality of fiber types,” [0097]) and wherein at least a first portion of the fibers comprises viscose fibers and the second portion of fibers is formed from fibers made of cotton ([0097]).
Chapman teaches that the smokeless tobacco pouch provides a liquid-permeable container of a type that may be considered to be similar in character to the mesh-like type of material that is used for the construction of a tea bag and that components of the loosely arranged composition adapted for oral use readily diffuse through the pouch and into the mouth of the user ([0041]).
Chapman does not expressly teach that at least 80% by weight of the fibers in the nonwoven web are the first portion of the fibers.
Bushman teaches a pouched product that can be used to filter coffee, tea, spices, herbs, hops ([0009]) comprising: an outer water-permeable pouch defining a cavity and a composition comprising a water-soluble component wherein the composition is situated within the cavity ([0024]); the outer water-permeable pouch comprises a nonwoven web comprising fibers, the fibers comprising a first portion of the fibers and a second portion of the fibers ([0037]) in which both the first and second portions can be naturally-derived fibers, wherein the naturally derived fibers include viscose fibers, sisal fibers and combinations thereof and also wool or cotton or combinations thereof ([0032], [0037]).
Bushman teaches a wide range of combinations of fibrous materials including wherein all fibers of the non-woven are naturally derived fibers, a combination of first and second fibers, combinations of three or more fibers, and ranges from 1-99% of natural fibers if not all fibers are natural (¶ 0037-0042). Bushman teaches selecting a combination of natural fibers from a list including both fibers corresponding with applicant’s first group and fibers corresponding with applicant’s second group, providing no limits regarding the percent by weight of one relative to the other, and encouraging one of ordinary skill to utilize a variety of weights as evidenced by the broad disclosure; however, Bushman does not explicitly teach a first portion of fibers selected from the claimed group and a second portion of fibers selected from the claimed group in which at least 80% by weight of the fibers are the first portion.
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to utilize at least 80% or 90% by weight sisal or viscose fibers as well as some amount of cotton or wool fibers in the non-woven pouch of Bushman as Bushman teaches using a mixture of naturally-derived fibers for the non-woven including both a sisal or viscose fiber and a fiber corresponding with the second group of claimed fibers in which the non-woven is all or 99% naturally derived fibers presenting a reasonable expectation of success, selection of a particular materials such as viscose or sisal for a first fiber and cotton or wool for a second fiber presents selection by one of ordinary skill of fibers from a finite number of identified predictable solutions for the fiber and serves to use the fibers for their identified intended purpose as a naturally derived fiber in Bushman establishing predictable results. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
It would have been obvious for one of ordinary skill in the art at the time of filing to have taken the characteristics of the fibers of the pouched product of Bushman and applied them to Chapman, which teaches a similar pouch material, with a reasonable expectation of success and predictable results. The known characteristics of the fibers of a pouched product taught by Bushman would have predictably resulted in an effective pouched product for a tobacco material. Therefore, it would have been within the skill of the ordinary artisan to use those fiber characteristics in the pouched product of Chapman. See MPEP 2143 I D.
Regarding claims 2, 3 and 6, Chapman teaches that the fibers measure about 1.5 dpf to about 2.0 dpf ([0100]) and that the fibers in the nonwoven pouch include continuous filament fibers and staple fibers ([0093]). Chapman teaches that the fibrous webs have a basis weight of about 20 gsm to about 35 gsm such that the fiber orientation and porosity of the pouched product formed therefrom can retain the composition adapted for oral use that is enclosed within the outer water-permeable pouch, but can also allow the flavors of the composition to be enjoyed by the consumer ([0107]).
Regarding claims 17-19, modified Chapman teaches that the nonwoven web comprises a heat sealable binder coating on the nonwoven web ([0095]), specifically a thermoplastic polymer material ([0096]) such as polylactic acid (PLA) (Chapman, [0109]).
Regarding claim 21, modified Chapman teaches that the composition is substantially free of a tobacco material, and specifically comprises coffee or tea (Bushman, [0024]).
Regarding claim 22, modified Chapman teaches that the composition comprises particulate non-tobacco material (e.g., microcrystalline cellulose) that has been treated to contain nicotine (Chapman, [0035]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chapman view of Bushman as applied to claim 1 above, and further in view of US 20040094474 (Heinrich hereinafter).
Regarding claim 14, modified Chapman does not expressly teach that the fibers are long wood fibers.
Heinrich teaches a filter material for tea bags which includes natural fibers such as hemp, manila, jute, sisal and long fiber wood ([0062]). Modified Chapman teaches that the nonwoven material is used in tea bags (Chapman, [0035] and Bushman, [0024]) and that the natural fibers include hemp and sisal (Bushman, [0032]). It would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to have looked to the material in the filters of tea bags such as taught by Heinrich to apply to the filter material of modified Chapman with a reasonable expectation of success and predictable results, namely that natural fibers are biodegradable ([0005]).
Modified Chapman does not expressly teach that the long wood fibers are wood-derived from at least one gymnosperm tree. However, the steps and parameters for the process of making the long wood fibers does not add patentable details to this invention, as no structural characteristics are associated with the step in the specification. Furthermore, the prior art discloses the same structural characteristics as the instantly claimed long wood fibers. As such, this is a “product by process” claim limitation. See MPEP 2113 and 2114. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113).
Claim(s) 29 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chapman in view of Bushman as applied to claim 1 above, and further in view of US 20130206153 (Beeson hereinafter).
Regarding Claims 29 and 30, modified Chapman teaches using fillers or carriers for active ingredients, wherein the filler can comprise microcrystalline cellulose (Chapman, [0035]).
Modified Chapman does not expressly teach how much of the composition comprises the filler by weight.
Beeson teaches a smokeless tobacco product which includes a moisture-permeable container in the form of a pouch which contains a solid tobacco filler material wherein the filler material is microcrystalline cellulose in an amount of up to about 20 dry weight percent ([0072]). It would have been obvious for one of ordinary skill in the art at the time of filing to have looked to Beeson, which teaches a similar oral pouched product with a MCC filler, for the amount of filler by weight to include in modified Chapman, with a reasonable expectation of success and predictable results. It would have been within the skill of the ordinary artisan to use the weight percent of MCC filler taught by Beeson in the pouched product of modified Chapman. See MPEP 2143 I D.
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 YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755