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 .
Examiner Comment
A Non-Final Rejection is issued because the Applicant persuasively argued the rejection of claim 19.
Status of the Claims
Claims 1-21 and 23-25 are pending.
Claims 9-13 remain withdrawn.
Claims 23 and 24 have been amended.
Claim 25 is new.
Response to Amendment
The Declaration under 37 CFR 1.132 filed 3/26/2026 is insufficient to overcome the rejection of claims 1, 23-24 and 25, respectively, based upon WO 2017097840 (Ibrahim hereinafter) applied under 35 U.S.C. 103 and CN 104856212 (Liu) in view of WO 2017097840 (Ibrahim hereinafter) applied under 35 U.S.C. 103, respectively, as set forth in the last Office action because:
With respect to claim 1, the Inventor states “The resulting structure of claim 1 would have a different spatial arrangement of both the plant extract and the solid additive. In fact, the solid additive would have a localized concentration that is distinct from the more uniform dispersion of Ibrahim.” These statements are not commensurate in scope with the claims because neither the localized concentration of the solid additive nor the spatial arrangement of both the plant extract and the solid additive are claimed.
With respect to claims 23-24, the Inventor states “sprinkling the solid additive on the first fibrous support, applying the plant extract to the second fibrous support, the plant extract forming a wet face on the second fibrous support, and further comprising contacting the first fibrous support and the wet face of the second fibrous support to sandwich the solid additive would have a different spatial arrangement of both the plant extract and the solid additive than that of Liu.” These statements are not commensurate in scope with the claims because the spatial arrangement of both the plant extract and the solid additive are not claimed.
With respect to claim 25, the Inventor states “a step of drying the first fibrous support after sprinkling the solid additive on the first fibrous support and before the step of contacting the first fibrous support and the wet face of the second fibrous support to sandwich the solid additive would have a different spatial arrangement of both the plant extract and the solid additive than that of Liu.” These statements are not commensurate in scope with the claims because the spatial arrangement of both the plant extract and the solid additive are not claimed.
Response to Arguments
Applicant’s arguments, filed 3/26/2026, with respect to claim 19 have been fully considered and are persuasive. Therefore the rejection of claim 19 as stated in the Non-Final Rejection dated 10/29/2025 has been withdrawn.
Applicant's remaining arguments filed 3/26/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
Applicant respectfully submits that in accordance with MPEP § 2113(I), the structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979). Applicant respectfully submits that a person having ordinary skill in the art would understand that the solid additive being attached to the fibrous support via the plant extract and having been applied to the fibrous support after the application of the plant extract results in a concentrated, extract bound plant dust that is structurally distinguishable from the asserted plant sheet resulting from page 8, lines 28-31 of Ibrahim, which would be homogenous. Thus, Applicant respectfully requests the withdrawal of the rejection under 35 U.S.C. § 103.
In support of the above remarks, Applicant further submits a declaration under 37 C.F.R. § 1.132 herewith.
Examiner Response A:
The Examiner respectfully disagrees. While the instant reconstituted plant sheet may be structurally distinguishable from the asserted plant sheet resulting from page 8, lines 28-31 of Ibrahim, distinguishing structural features are not claimed. Furthermore, the declaration under 37 C.F.R. § 1.132 is insufficient to overcome the rejection because it provides statements that are not commensurate in scope with the claims, specifically discussing the localized concentration of the solid additive and the spatial arrangement of both the plant extract and the solid additive, neither of which are claimed.
Applicant Argument B:
Applicant further submits that a person skilled having ordinary skill in the art would not have found it obvious to view the vast list of "flavour" and "flavouring" in page 9, lines 4-19 of Ibrahim, including the forms thereof, and specifically choose a solid additive that is plant dust, the plant dust comprising plant particles having a particle size of from 0.01 µm to 50 µm.
Applicant respectfully submits that a convincing line of reasoning has not been established as to why a person having ordinary skill in the art would specifically choose a powdered botanical, as opposed to any of the thousands of flavours and flavourings stated (e.g., liquid aspartame, powdered liquorice, etc.). Thus, Applicant respectfully requests the withdrawal of the rejection under 35 U.S.C. § 103.
Applicant submits that Ibrahim discloses a broad and open-ended list of possible "flavours" and "flavourings," including numerous different forms and materials. Applicant submits that these options are not finite or easily traversed and provide no reason for a person having ordinary skill in the art to specifically select a powdered botanical, as opposed to any of the many other disclosed options. Thus, Applicant respectfully requests the withdrawal of the rejection under 35 U.S.C. § 103.
Applicant submits that Ibrahim discloses a vast list of at least hundreds if not thousands of flavours and flavourings, or in other words is "[a] broad disclosure of a genus comprising hundreds ... of ... compositions [that] does not render any particular species of composition that falls within the genus obvious." Thus, Applicant respectfully requests the withdrawal of the rejection under 35 U.S.C. § 103.
Applicant respectfully notes that Ibrahim discloses well over 33 potential components, and as in Ex parte Zerbe, fails to provide any evidence to specifically choose a powdered botanical. Thus, Applicant respectfully requests the withdrawal of the rejection under 35 U.S.C. § 103.
Examiner Response B:
The Examiner respectfully disagrees. First, the Examiner does not state that a powdered botanical is chosen “as opposed to any of the thousands of flavours and flavourings stated”. Other flavors and flavorings may also be included. Second, there are a reasonable number of "flavour" and "flavouring" listed, specifically extracts, flavour enhancers, bitterness receptor site blockers, sensorial receptor site activators or stimulators, sugars and/or sugar substitutes, and other additives such as charcoal, chlorophyll, minerals, botanicals, or breath freshening agents. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include any of these reasonable number of flavorings, including multiple of these flavorings because the courts have held that patents are relevant for all they contain and a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123 I.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017097840 (Ibrahim hereinafter).
Regarding claims 1, 3 and 5, Ibrahim teaches a reconstituted plant sheet (page 3, lines 5-10) comprising:
a fibrous support comprising plant fibers, specifically tobacco fibers (page 8, lines 13-20),
a plant extract, specifically “concentrated tobacco solubles” (page 8, lines 21-28),
a solid additive, specifically Ibrahim teaches that the solid additive includes a powdered botanical (page 9, lines 4-19), which is plant dust, and
an aerosol generating agent (page 8, lines 24), specifically glycerol (page 5, lines 10-13).
Ibrahim teaches that the solid additive, or powdered botanical, contacts the fibrous support, specifically before the reconstituted tobacco is dried into the reconstituted plant sheet (page 7, lines 28- page 9, line 19).
Ibrahim teaches that the weight content of dry matter of the plant extract included in the reconstituted plant sheet is 41.1% (page 17, lines 20-23), which falls within the claimed range.
Ibrahim teaches that the solid additive is attached to the fibrous support via the plant extract, specifically via spraying or coating (page 8, lines 28-31).
Ibrahim teaches that the plant dust is a botanical that has been powdered (page 9, lines 4-19). Ibrahim also teaches that a powder has the particle size of less than 200 micron, specifically less than 100 micron (page 18, lines 27-28). Thus it would have been obvious for one of ordinary skill in the art at the time of filing that the botanical that is powered, specifically the plant dust, has a particle size of less than 100 micron since Ibrahim teaches that is a reasonable size for a powder particle (page 18, lines 27-28).
Regarding the limitations, “the solid additive having been applied to the fibrous support after the application of the plant extract” and “the solid additive is attached to the fibrous support via the plant extract” these are product by process limitation. The courts have held that "[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." See MPEP 2113 I. The fibrous support with the solid additive attached along with the plant extract (page 8, lines 28-31) is interpreted to read on the claimed product.
Regarding claims 2 and 14, Ibrahim teaches specifically glycerol in an amount of 10-20 % by weight of the composition (page 5, lines 10-13).
Regarding claims 4, 16 and 17, Ibrahim teaches that the weight content of dry matter of the plant fibers is from 10% to 30% tobacco fibers (page 2, lines 17-18).
Regarding claim 6, Ibrahim teaches that the solid additive further includes texturing agents like guar gum (page 15, lines 10-20).
Regarding claims 7 and 18, Ibrahim teaches that the solid additive is a powdered botanical (page 9, lines 4-19), which is plant dust, in an amount of 5% (page 9, Table 1).
Regarding claim 8, Ibrahim teaches that the plant fibers and the plant extract in the reconstituted plant sheet are from the tobacco plant and the plant dust is from botanicals, which are from aromatic, perfume, medicinal, tobacco, and/or food plants (see rejection of claim 1, above).
Regarding claim 15, Ibrahim teaches specifically glycerol in an amount of 10-20 % by weight of the composition (page 5, lines 10-13).
Regarding claim 19, Ibrahim does not expressly teach that the weight content of dry matter of the plant dust is added in an amount of from 10 weight percent to 30 weight percent.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the weight content of dry matter of the plant dust since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed weight content of dry matter of the plant dust is critical and has unexpected results. In the present invention, one would have been motivated to optimize the weight content of dry matter of the plant dust motivated by the desire to optimize the flavor in the reconstituted plant sheet.
Regarding claim 20, Ibrahim teaches that the plant dust comprises ginger or coffee (page 9, lines 4-19).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ibrahim as applied to claim 20, above, and further in view of US 20170164651 (Mua hereinafter).
Regarding claim 21, Ibrahim does not expressly teach that the food plant is rooibos.
Mua teaches tobacco containing products which can include botanical material including rooibos ([0038]). It would have been obvious for one of ordinary skill in the art at the time of filing to have chosen any appropriate botanical material that is applied to tobacco products, including rooibos, as taught by Mua, with a reasonable expectation of success and predictable results, namely for the purpose of imparting medicinal or sensory characteristics to the tobacco product ([0038]).
Claim(s) 23-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 104856212 (Liu hereinafter) in view of Ibrahim.
A machine translation was applied to translate CN 104856212. All citations to CN 104856212 refer to the machine translation.
Regarding claim 23, Liu teaches a reconstituted plant sheet (abstract) comprising: 2 fibrous supports (“supporting layers”) comprising plant fibers, wherein one layer is a first fibrous support and another layer is a second fibrous support, specifically tobacco fibers (Example 1, (1) ), a plant extract (“tobacco extract”) (Example 1, (2) ), a solid additive (“powdered tobacco material”) positioned between the 2 fibrous supports and contacting the 2 fibrous supports (Example 1, (3) ).
Liu teaches that the weight content of dry matter of the plant extract is 5 g/m2 on the inner surface of each supporting layer, or 10 g/m2 total (Example 1, (2) ). Liu does not expressly state that this amount of dry matter of the plant extract corresponds to between 5% to 47% weight content of dry matter of the plant extract in the reconstituted plant sheet. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the weight content of dry matter of the plant extract in the reconstituted sheet since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed weight content is critical and has unexpected results. In the present invention, one would have been motivated to optimize the weight content of dry matter of the plant extract motivated by the desire to effectively retain the plant aroma components (Liu, page 3, paragraph 3).
Liu does not expressly teach an aerosol-generating agent.
Ibrahim teaches a reconstituted plant sheet (page 3, lines 5-10) comprising: a fibrous support comprising plant fibers, specifically tobacco fibers (page 8, lines 13-20), a plant extract, specifically “concentrated tobacco solubles” (page 8, lines 21-28), a solid additive, specifically Ibrahim teaches that the solid additive includes a powdered botanical (page 9, lines 4-19), which is plant dust, and an aerosol generating agent (page 8, lines 24). It would have been obvious for one of ordinary skill in the art at the time of filing to have included an aerosol generating agent, as suggested by Ibrahim, because an aerosol generating agent may promote the generation of an aerosol by promoting an initial vaporization and/or the condensation of a gas to an inhalable solid and/or liquid aerosol and may also improve the delivery of flavor from the aerosol generating material (Ibrahim, page 4, lines 25-31).
Regarding claims 24 and 25, modified Liu teaches that the reconstituted plant sheet comprises: the aerosol-generating agent, specifically glycerol, in an amount of 10-20 % by weight of the composition (Ibrahim, page 5, lines 10-13) and teaches that the weight content of dry matter of the plant fibers is from 10% to 30% tobacco fibers (Ibrahim, page 2, lines 17-18). It would have been obvious for one of ordinary skill in the art at the time of filing to have included the weight content of plant fibers, as suggested by Ibrahim, because Ibrahim teaches a reconstituted tobacco sheet that heats smokable material to volatilize at least one component of the smokable material to form an aerosol which can be inhaled without burning or combusting the smokable material (page 1, lines 10-20).
Modified Liu teaches that the weight content of the plant dust is 50 g/m2 (Liu, Example 1, (3) ). Modified Liu does not expressly state that this amount of plant dust corresponds to between 10% to 30% weight content of dry matter of the plant dust in the reconstituted plant sheet. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the weight content of dry matter of the plant dust in the reconstituted plant sheet since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed weight content is critical and has unexpected results. In the present invention, one would have been motivated to optimize weight content of dry matter of the plant dust in the reconstituted plant sheet motivated by the desire to effectively retain the plant aroma components (Liu, page 3, paragraph 3).
Regarding the limitations, “wherein the reconstituted plant sheet is formed by a process comprising: sprinkling the solid additive on the first fibrous support; applying the plant extract to the second fibrous support, the plant extract forming a wet face on the second fibrous support; and contacting the first fibrous support and the wet face of the second fibrous support to sandwich the solid additive” and “wherein the method further comprises a step of drying the first fibrous support after the step of sprinkling the solid additive on the first fibrous support and before the step of contacting the first fibrous support and the wet face of the second fibrous support to sandwich the solid additive,” these limitations are process limitations within the product claim. The courts have held that "[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). The courts have also held that once a product appears to be substantially identical is found and a prior art rejection is made, the burden shifts to the applicant to show an nonobvious difference. Specifically, "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
Conclusion
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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