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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/14/2025 has been entered.
Response to Amendment
This office action is in response to Applicant’s amendment filed 7/14/2025.
Claim 1 is amended.
Claims 2, 4-9, 11, 15-17, 19, 22-25, 27-28, 34-35, 37-38, 40, and 44 are cancelled.
Claims 45-46 are newly added.
Claims 1, 3, 10, 12-14, 18, 20-21, 26, 29-33, 36, 39, 41-43, and 45-46 are pending.
Response to Arguments
Applicant's arguments filed 7/14/2025 have been fully considered but they are not persuasive.
Applicant argues that Hess is nonanalogous art (p. 6). Specifically, Applicant argues that Hess, dealing with food products, is not within the same field of endeavor as the presently claimed subject matter, dealing with smoking articles (p. 6-7).
The Examiner agrees that Hess is not in the same field of endeavor as the claimed invention. However, the Examiner finds Applicant’s argument unpersuasive because Hess is reasonably pertinent to the problem faced by the inventors (see below).
Applicant further argues that Hess is not reasonably pertinent to the problem faced by the inventors (p. 7). Specifically, Applicant argues that the problem faced by inventors is finding a tobacco substitute that has acceptable taste when smoked (citing [0005]) whereas Hess seeks to extract flavoring materials useful in edible foods for human consumption from chocolate manufacturing by-products (citing p. 1, ll. 31-38) (p. 7). Applicant argues that Hess focuses solely on the extract and says nothing of the properties of the extracted cocoa husk (p. 7).
The Examiner has noted Applicant’s argument but finds it unpersuasive.
‘In order for a reference to be “reasonably pertinent” to the problem, it must logically [] have commended itself to an inventor's attention in considering his problem."’ MPEP 2141.01(a). “In order to support a determination that a reference is reasonably pertinent, it may be appropriate to include a statement of the examiner's understanding of the problem. The question of whether a reference is reasonably pertinent often turns on how the problem to be solved is perceived. If the problem to be solved is viewed in a narrow or constrained way, and such a view is not consistent with the specification, the scope of available prior art may be inappropriately limited. It may be necessary for the examiner to explain why an inventor seeking to solve the identified problem would have looked to the reference in an attempt to find a solution to the problem, i.e., factual reasons why the prior art is pertinent to the identified problem.” Id.
Here, the Examiner agrees with Applicant that the problem faced by inventors is finding a tobacco substitute that has acceptable taste when smoking. At the same time, inventors are also balancing such a problem with the additional problem of producing a mainstream smoke that is low in nicotine or does not contain nicotine ([0005]). In solving the problem, inventors have looked to other plants/botanicals lacking nicotine to replace tobacco in order to reduce the amount of nicotine while aiming for a neutral taste that is devoid of any harsh components (see [0027]). Inventors have chosen a neutral flavor reconstituted plant material because it does not mask the taste of the tobacco materials, and can enhance the smoking or aerosol experience by diluting and decreasing irritants in addition to reducing nicotine levels ([0028]). Thus, an inventor of the instant invention looking to solve the above-identified problems would have looked to another plant/botanical material that (1) lacks nicotine and (2) has a neutral flavor that would not mask the taste of tobacco when combined.
Hess would have logically commended itself to the inventor’s attention when looking for another plant material that (1) has no nicotine and (2) has a neutral flavor and does not mask the taste of tobacco. The Examiner agrees with Applicant that Hess seeks to extract flavoring materials from the cocoa husks—but this is precisely the reason why an inventor would have looked towards Hess’s teachings. Specifically, Hess teaches a process for extracting flavoring component from cocoa shells by steeping the cocoa shell byproduct in an aqueous liquid at an elevated temperature for a period of time sufficient to effect substantial extraction of flavoring materials from the shell (p. 2, ll. 6-16). Substantial removal of the flavoring materials from cocoa shells would effectuate inventor’s goal of providing a botanical material devoid of flavoring materials that would mask the taste of tobacco when mixed together. To further support this point, the Examiner points out that inventors have looked to extraction processes for removing water soluble components in order to contribute to the neutral taste of the final product ([0033]).
Applicant argues that the Office Action’s use of Hess for optimization is an assumption that is based on impermissible hindsight (p. 7). Specifically, Applicant argues that the notion of removing water-soluble material from cocoa husk for the purpose of improving taste when smoked arises solely from Applicant’s own application and not from the cited prior art.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Here, all of the teachings cited above and in the office action are found in the prior arts of Tamag and Hess, rather than relying on the instant application’s disclosure.
Applicant submits that a person of ordinary skill in the art would not reasonably equate the extraction of flavoring agents for use in food, as disclosed in Hess, with any expectation of desirable outcomes in the context of smokable products (p. 7-8).
The Examiner respectfully disagrees. Hess teaches that the relationship between cocoa shell-containing material and water, as well as processing temperature and time may be varied to obtain optimum extraction of flavoring material (p. 2, ll. 16-27). The factors of ratio of cocoa shells to water, temperature, and/or time would affect extraction of flavoring materials in the cocoa shells regardless of whether they are being used in the food or tobacco fields.
Applicant submits that Tamag provides alternative means for enhancing the flavor profile of tobacco substitutes, for example using mixtures of filler constituents, raw forms of substances rather than chemically pure forms, or the addition of special active substances (p. 8). Applicant argues that nowhere does Tamag teach or suggest that a skill person should modify the level of water-soluble compounds in the cocoa husk material (p. 8).
The Examiner has noted Applicant’s argument but finds it unpersuasive. “Disclose[d] examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” See MPEP 2123(II). Here, while Tamag teaches enhancing the flavor profile of tobacco substitutes via mixtures of fillers, raw forms of substances, or the addition of special active substances, the lack of any teaching in Tamag for modifying the level of water-soluble compounds does not negate the suggestion to modify the level of water-soluble compounds in the cocoa husk material found in Hess.
As additional support, Tamag suggests using these waste products in large amounts and sufficiently constant quality for reducing the level of nicotine (p. 1, ll. 38-45). As pointed out in Hess, however, these cocoa shells have been recognized to vary in quality from batch to batch particularly in relation to the region in which cocoa beans are grown, and the extraction procedure disclosed therein may be adequate to provide the desired quality of materials (p. 1, ll. 53-61). Thus, Tamag’s suggestion of using sufficiently constant quality waste products and Hess’s teaching of mitigating the quality of the cocoa shells via extraction would motivate one of skill in the art to modify water soluble compounds in the cocoa husk material.
Applicant argues that Hess does not disclose that its extraction process alters the properties of cocoa husk material in any relevant aspect, let alone with regard to flavor characteristics when smoked (p. 8).
The Examiner respectfully disagrees. Hess teaches that the steeping process substantially extracts flavoring material from the shells (p. 2, ll. 6-16). As a consequence, Hess teaches that the shells contain less flavoring material which would necessarily affect the flavor characteristics of the extracted cocoa husks when smoked.
Applicant further argues that the inclusion of extracted cocoa husk fibers yields an unexpectedly advantageous neutral taste when smoked (citing [0027]-[0028], [0033]) whereas numerous tobacco substitutes in Tamag are characterized as having an unpleasant aftertaste (citing p. 2, ll. 44-46) and papery taste expected for substitutes containing a significant amount of cellulose fibers (citing [0090] of the instant specification).
The Examiner has noted Applicant’s arguments but finds it unpersuasive.
First, Tamag specifically teaches “[t]he paste constituents of the tobacco substitute paste, which fulfil different tasks, are desirably mixtures of at least two different components, preferably at least three different components, in order to avoid the peculiarities of a single component standing out in the smoke and causing the unpleasant after-taste which is characteristic of numerous known tobacco substitutes” (p. 2, ll. 38-46). Here, Tamag’s tobacco substitute paste contains a filler constituent (p. 1, ll. 50-59), an active substance constituent (p. 1, ll. 60-70), a nitrogen donor constituent (p. 1, ll. 70-84), a structure-forming constituent (p. 1, ll. 85-89), and a special active substance constituent (p. 1, l. 90-p. 2, l. 14). The “unpleasant after-taste” that Applicant refers to would not be present in Tamag’s tobacco substitute paste because there are already five different constituents in mixture.
Second, ‘[t]he evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance."’ MPEP 716.02(b). Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.") Here, Applicant merely points to the conclusion that the extracted cocoa husk fibers yield a neutral taste without establishing the results are unexpected or significant.
Lastly, "[e]xpected beneficial results are evidence of obviousness of a claimed invention, just as unexpected results are evidence of unobviousness thereof." MPEP 716.02(c). Here, it has already been established in Hess that extracting cocoa shells at an elevated temperature for a period of time to effect substantial extraction of flavoring materials (p. 2, ll. 6-16). One of skill in the art would expect that as more flavoring materials are removed from the cocoa husks, the husk becomes less flavorful (i.e., more neutral). Applicant has not explained why their extracted cocoa husk material would unexpected properties over Hess’s substantially extracted cocoa shells.
Claim Rejections - 35 USC § 103
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.
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 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.
Claims 1, 3, 10, 12-13, 21, 29-31, 41, 43, and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Tamag Basel AG (GB 1413177; hereby Tamag; of record) in view of Hess (GB 1195634; of record).
Regarding claims 1, 13, and 43, Tamag discloses a regenerated tobacco (title; “aerosol generating product” and “reconstituted cocoa husk material blend”) comprising:
a nicotine-free tobacco substitute paste (p. 1, ll. 16-17) comprising a filler constituent which consists of one or more of the following filler components including cocoa bean shells and fibers (p. 1, ll. 49-59; “cocoa husk fibers”) and a structure-forming constituents including cellulose derivatives (p. 1, ll. 85-89) such as cellulose fibers (p. 4, ll. 51-54; “web building fibers” as included in Applicant’s specification at para. 16);
wherein the tobacco substitute paste (i.e. “reconstituted cocoa husk material”) can amount to 20-80% the dry weight of the total paste constituents of the tobacco paste plus the tobacco substitute paste, preferably in an amount of 50 % by dry weight (p. 3, ll. 1-6; “amount of about 10% or more by weight,” “amount of 30% by more by weight,” and “less than about 90% by weight”);
wherein the constituents of the tobacco substitute paste are raw substances which are preferably natural products or by-products which arise when the former is processed (p. 2, ll. 71-77; emphasis added);
a special active substance constituent including plasticizers (p. 1, l 90- p. 2, l. 5) such as glycerine and diethylene glycol (p. 3, ll. 52-53; “humectants” as glycerine is the same as glycerol in Applicant’s specification at para. 58); and
a tobacco paste (p. 1, ll. 15-16) which contains tobacco or tobacco scrap (p. 2, l. 24-26; “tobacco material”).
Moreover, Tamag discloses that mixing the tobacco paste with nicotine-free tobacco paste in the ratio of the desired reduction of nicotine content in the regenerated tobacco (p. 1, ll. 9-18) and that the task of the invention is to design a regenerated tobacco with very great nicotine reduction by using waste products that are in large amount and sufficiently constant quantity (p. 1, ll. 38-45).
Therefore, Tamag recognizes that ratios of tobacco paste to nicotine-free tobacco paste is a result effective variable for modifying the nicotine content in the regenerated tobacco.
Regarding the claim limitation “a reconstituted cocoa husk material blend…produces nicotine when smoked of less than 0.0008 mg/mg,” it would have been obvious to change the ratio of tobacco paste to nicotine-free tobacco paste to obtain various amounts nicotine content reduction in the regenerated tobacco because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05 II(B). Moreover, one of ordinary skill in the art would be motivate to reduce the amount of nicotine when smoked in the composition because Tamag suggests reducing the nicotine content in the mixed regenerated tobacco (p. 1, ll. 38-45).
However, Tamag is silent as to wherein the reconstituted cocoa husk material contains water soluble cocoa husk components in an amount of less than about 50% by weight (Claim 1) or less than about 8% by weight (Claim 13). While Tamag suggests using byproducts of filler constituents after they are processed, Tamag does not explicitly teach the amount of water-soluble components in the filler byproducts.
Hess teaches a process for production of cocoa-like flavoring from cocoa shells (title) wherein it is well known that cocoa shells are normally considered waste by-products with little use (p. 1, ll. 25-30) wherein the primary objective of this invention is to utilize the cocoa shell-containing by-products to manufacture a simple and inexpensive means of flavoring material (p. 1, ll. 31-35), and wherein cocoa shells vary in quality from batch to batch in relation to the region in which cocoa beans are grown (p. 1, ll. 53-58). Hess teaches the flavoring material is prepared by steeping a cocoa shell-containing material in an aqueous liquid at an elevated temperature for a period of time sufficient to effect substantial extraction of the flavoring material from the shells (i.e. “water soluble cocoa husk components”), and then separating the aqueous liquid from the residue of the cocoa shell-containing material (p. 2, ll. 6-16), wherein the relationship between cocoa shell-containing material and water, as well as processing temperature and time may be varied to obtain optimum extraction (p. 2, ll. 16-27), and substantially all of the removable flavor is extracted (p. 2, ll. 42-46) in order to provide an adequate product (p. 1, ll. 58-61).
Thus, Hess establishes that the ratio of cocoa shell to water, temperature, and time are result-effective variables that affect the amount of flavoring material extracted.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply Hess’s extraction process to Tamag’s cocoa bean shell byproduct because (a) the cocoa bean shell byproduct in Tamag would have a varying quality depending on where the plant is grown (Hess; p. 1, ll. 53-58), which goes against Tamag’s suggestion of using a sufficient quality waste byproduct (Tamag; p. 1, ll. 38-45), and (b) such an extraction process would yield the predictable result of an adequately constant byproduct (Hess; p. 1, ll. 58-61). Moreover, it would have been obvious to said skilled artisan to have modified the ratio of water to cocoa shells, temperature, and/or time of extraction as suggested in Hess to obtain various amounts of substantial extraction of flavoring materials because it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art (see MPEP 2144.05 II(B)).
Regarding claim 3, modified Tamag discloses the tobacco paste (p. 1, l. 11; “reconstituted tobacco material”).
Regarding claim 10, modified Tamag discloses that per 100 parts of filler constituent, 10 to 45 parts of active substance constituent, 10 to 45 parts of nitrogen donor constituent, 10 to 60 parts of structure-forming constituent, and 20 to 90 parts by dry weight of special active substance constituent are present (p. 2, ll. 6-13). This gives a range of 150-340 total parts (100+10+10+10+20; 100+45+45+60+90). This means that the special active substance including glycerine can be present in a range of 5.88% (20/340*100) up to 60% (90/150*100). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 12, modified Tamag discloses the nicotine-free tobacco substitute paste is mixed with the tobacco paste (p. 1, ll. 9-18; “treated with a nicotine composition”).
Regarding claim 21, modified Tamag discloses the special component can include calcium carbonate (filler) (p. 4, ll. 76-80; “filler particles”).
Regarding claim 29, modified Tamag discloses wherein a paste of materials is manufactured and then shaped in the form of filaments, fibers, flocks, or ribbons to produce the regenerated tobacco (p. 3, ll. 72-79; “strip, strips, or shreds”).
Regarding claims 30-31, modified Tamag discloses wherein a paste of materials is manufactured and then shaped in the form of sheets, filaments, fibers, flocks, or ribbons to produce the regenerated tobacco (p. 3, ll. 72-79; “strip, strips, or shreds”), the filler including byproducts cocoa bean shells and fibers (p. 1, ll. 49-59) and cellulose fibers (p. 4, ll. 51-54), tobacco or tobacco scrap (p. 2, l. 24-26) and glycerine (p. 3, ll. 52-53).
Therefore, since modified Tamag discloses the filler material having the same structure as claimed (shreds of claim 29) and the same composition as claimed (extracted cocoa husk, web building fibers, tobacco material, and humectant of claim 1), the filler of modified Tamag is expected to have a static burn rate of greater than 4 mm/min and have a filling power of greater than 4 cm3/g and less than about 10 cm3/g. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 41, modified Tamag further discloses the constituents of the tobacco substituted paste can amount to 20-80 percent by dry weight the total paste of the tobacco paste plus the tobacco substitute pate (p. 3, ll. 1-6). Therefore, the tobacco paste is present in an amount of 20-80 percent (i.e. “an amount greater than about 6% or more by weight”).
Regarding claim 45, modified Tamag discloses the cocoa husks are extracted in water (Hess; p. 2, ll. 6-16).
With regards to the claim limitation “the extracted cocoa husk fibers are obtained from cocoa husk by an extraction process comprising the following steps: a. contacting the cocoa husk with a solvent comprising water in order to obtain a solvent/cocoa husk mixture; b. agitating for one half-hour to 6 hours, while maintaining the solvent/cocoa husk mixture at a temperature between 40°C and 90°C to extract an extract of water soluble components; and c. separating the thus extracted cocoa husk material from the extract,” the claim has been considered and interpreted as a product-by-process claim. "[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). See MPEP 2113. Here, modified Tamag’s aqueous-extracted cocoa husks appear to be substantially identical to the extracted cocoa husk fibers as claimed.
Claim 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess as applied to claim 1 above, and further in view of Schmidt et al. (US 4306578; of record).
Regarding claim 14, modified Tamag discloses the aerosol generating product as discussed above with respect to claim 1 including cellulose fibers (p. 4, ll. 51-54; “web building fibers”).
However, modified Tamag is silent as to the web building fibers comprise delignified cellulosic fibers.
Schmidt teaches a reconstituted tobacco sheet (abstract; Col. 1, ll. 10-15) comprising tobacco, which includes reconstituted tobacco and tobacco substitutes such as cocoa (col. 6, ll. 10-17) and 2-12 percent by weight of a delignified hardwood pulp comprising cellulose fibers (see claim 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cellulose fibers of modified Tamag to include the delignified hardwood pulp in an amount of 2-12% as in Schmidt because (a) Tamag suggests using cellulose fibers; and (b) such a modification is beneficial because enhances the tensile and tear properties of the sheet (Schmidt; claim 4).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess as applied to claim 1 above, and further in view of Chapman et al. (US 5690127; of record).
Regarding claim 18, modified Tamag discloses the aerosol generating product as discussed above with respect to claim 1 including cellulosic fibers (p. 4, ll. 51-54; “web building fibers”).
However, modified Tamag is silent as to the web building fibers comprise a combination of softwood and hardwood fibers.
Chapman teaches a rod of tobacco material and/or other carbonaceous materials (abstract) comprising tobacco, hardwood, softwood, coconut hulls, tobacco stems, tobacco dust, and other tobacco material, wherein the use of higher burning temperature materials such as hardwoods increases the combustion temperature to result in a more complete combustion of the tobacco column (Col. 4, ll. 1-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added hardwood and softwood fibers as in Chapman to the composition of modified Tamag because (a) modified Tamag includes cellulose fibers in the nicotine-free tobacco substitute paste, and hardwoods and softwood are cellulose fibers; and (b) such as modification achieves a higher burn temperature resulting in a more complete combustion of the filler column (Chapman; Col. 4, ll. 1-12) thereby beneficially reducing the amount of sidestream smoke produced (Chapman; col. 3, ll. 10-15).
Claim 20 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess as applied to claim 1 above, and further in view of Perfetti et al. (US 2004/0255965; of record) as evidenced by Aft (“Pulp Freeness Conversion Chart” https://aft-global.com/en/resources/pulp-freeness-conversion-chart; accessed Feb 10, 2022; of record).
Regarding claims 20 and 26, modified Tamag discloses the aerosol generating material as discussed above with respect to claim 1, wherein a paste of materials is manufactured and then shaped in the form of sheets, filaments, fibers, flocks, or ribbons to produce the regenerated tobacco (p. 3, ll. 72-79).
However, modified Tamag is silent as to where in the extract cocoa husk fibers and the web building fibers are refined in an amount greater than 60°SR and less than about 90°SR; and the reconstituted cocoa husk material has a basis weight of 40-120 gsm.
Perfetti teaches a reconstituted tobacco material (abstract) comprising tobacco that is extracted, and the pulp portion is refined to a desired consistency for form a mat or web (para. 26), wherein the pulp in the slurry is refined in a conical refiner to a Canadian Standard Freeness (CSF) of about 50-200 mL (para. 48) and is formed into a sheet having a dry weight basis of 40-50 gsm (para. 48).
As evidenced by Aft, a CSF of 50-200mL is equivalent to 51.5-80.0°SR (see Table).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have refined the cocoa fibers and cellulose fibers as in modified Tamag to have a desired freeness of 51.5-80.0°SR as in Perfetti because such a modification involves optimization of prior art conditions (see MPEP 2144.05(II)(A)), and such a range is desirable for forming sheets of reconstituted tobacco (Perfetti; see paras. 26, 48). Moreover, it would have been obvious to said skilled artisan to have modified the basis weight of the reconstituted tobacco material of modified Tamag to have a dry basis weight of 40-50 gsm as in Perfetti because such a modification also involves optimization of prior art conditions (see MPEP 2144.05(II)(A)). Such optimization of prior art conditions would allow one of ordinary skill in the art to achieve a desired consistency for the mat or web.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess as applied to claim 29 above, and further in view of Uren (US 2016/0366926; of record).
Regarding claim 32, modified Tamag discloses the aerosol generating material as discussed above with respect to claim 29.
However, modified Tamag is silent as to the reconstituted cocoa husk material has been blended with a cannabis filler.
Uren teaches a smokable cannabis product (abstract) wherein the invention allows for the manufacture of a cannabis product that is blended with tobacco (para. 3), the cannabis product includes cannabis leaves (see Fig. 1) is rolled into a cigar (para. 21), wherein the cannabis has therapeutic effects for a variety of disorders such as sleep disorders, anxiety, neurodegenerative disorders and multiple sclerosis (para. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added cannabis as in Uren to the filler of modified Tamag in order to achieve a therapeutic effect that treats a variety of disorders (Uren; para. 2).
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess as applied to claim 1 above, and further in view of McAdam et al. (US 6289897; of record).
Regarding claim 33, modified Tamag discloses the aerosol generating product as discussed above with respect to claim 1.
However, modified Tamag is silent as a smoking article comprising an outer wrapper surrounding a smokeable rod.
McAdam teaches a smoking article filler (abstract) comprising a filler material (col. 2, ll. 17, 23; equivalent to a reconstituted material) comprising about 5-50% of a high fat or high oil containing residue (col. 2, ll. 23-25), the residue being the remainder of the plant material after extraction has occurred (col. 2, ll. 12-16; “extracted material”) from the shell of a cocoa plant (col. 2, ll. 8-9; “cocoa husk”), in the form of a fiber (see Col. 1; ll. 25-28); about 0-20% carbon (col. 2, ll. 28-29), wherein the temperature of the coal is considerably cooler than the burning temperature of materials, such as carbon (col. 4, ll. 26-36); about 2-30% aerosol source (col. 2, l. 27-28), the aerosol source being glycerol, polyhydric alcohols, propylene glycol, and triethylene glycol (col. 5, ll. 27-34; equivalent to a humectant); and little tobacco or no tobacco therein (Col. 1, ll. 49-53). Moreover, McAdam teaches forming a slurry of filler material into a dried sheet material which is then shredded into strands (Col. 10, ll. 15-28), and wrapping the smokable filler in a wrapper to form a rod of smokable filler material (Col. 5, ll. 59-61).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have wrapped modified Tamag’s filler material in a wrapper as in McAdam in order to obtain the predictable result of forming a rod of smokable filler material (McAdam; Col. 5, ll. 59-61) with the benefit of exhibiting good taste and flavor characteristics, lower static burning temperatures, lower sidestream smoke and a more localized burn zone with the careful selection of the cigarette wrapper (McAdam; col. 10, ll. 60-67).
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess and McAdam as applied to claim 33 above, and further in view of Rose et al. (US 2013/0306087; of record).
Regarding claim 36, modified Tamag discloses the smoking article as discussed above with respect to claim 33 comprising the smoking article comprising a wrapper enwrapping a rod of smokable filler material (McAdam; Col. 5, ll. 59-61).
However, modified Tamag is silent as to the wrapper including a plurality of discrete reduced ignition areas being spaced along the axial direction of the smoking article and having a diffusivity of less than about 0.5 cm/s at 20°C.
Rose teaches a smoking article (abstract), the smoking article (see Fig. 1) including a wrapper (122’) including a plurality of banded regions (126; interpreted as a plurality of discrete reduced ignition areas) formed of add-on solution (para. 32) spaced along the axial direction of the smoking article (see Fig. 1) having a diffusivity in the range of 0 to about 0.2 cm/sec (para. 10), wherein the diffusivity measurement is performed at around 23°C (see para. 60; the test is performed without heating or cooling).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added the plurality of banded regions as in Rose to the smoking article of modified Tamag in order to improve the ignition propensity characteristics of the smoking article (Rose; para. 62).
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess as applied to claim 1 above, and further in view of Lang (US 2020/0384221; of record).
Regarding claim 39, modified Tamag discloses the aerosol generating product as discussed above with respect to claim 1.
However, modified Tamag is silent as to a heating device and a chamber, the chamber containing the aerosol generating material, the heating device being positioned so as to heat the aerosol generating material for producing an inhalable aerosol without burning the aerosol generating material.
Lang teaches an aerosol generating article (abstract) comprising an aerosol forming substrate (20; Fig. 1-2) and an aerosol generating device (110; “heating device”) including a chamber (see Fig. 2; interpreted as the space occupied by the aerosol forming substrate 20) containing the aerosol forming substrate (see Fig. 2), the aerosol generating device includes a heating element (20) inserted directly into the aerosol generating substrate (para. 121), wherein the aerosol enters the cooling element (40) at 60 degrees (para. 124; “producing an aerosol without burning”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the aerosol generating device of Lang with the aerosol generating product of modified Tamag in order to avoid combustion of the aerosol forming substrate, thereby avoiding combustion and pyrolysis by-products (para. 2) which are known to be harmful.
Claim 42 is rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess and Chapman et al. as applied to claim 18 above, and further in view of Lin et al. (CN 109043639; see machine translation; of record).
Regarding claim 42, modified Tamag discloses the aerosol generating product as discussed above with respect to claim 18 comprising a mixture of hardwood and softwoods (Chapman; Col. 4, ll. 1-12).
However, modified Tamag is silent as to the softwood fibers and the hardwood fibers are present in a weight ratio from about 6:1 to about 1:0.75.
Lin teaches a reconstituted tobacco leaf product (abstract) comprising a tobacco pulp and a non-tobacco pulp in a mass ratio of 4-6:2-4 (p. 2, ll. 21-23) wherein the nontobacco pulp includes softwood, hardwood, and flax pulp in a ratio of 4-6:2-4:1-3 (p. 2, ll. 25-26; i.e. the softwood to hardwood ratio ranges from 3:1 (6:2) to 1:1 (4:4)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a softwood:hardwood ratio of 3:1 to 1:1 as in Lin for the aerosol generating product of modified Tamag in order to create a reconstituted leaf product that improves heating without burning quality of the tobacco product (Lin; abstract) which improves the stimulation, strength, fragrance, aftertaste, and thermo-sensitive properties of the smoke (Lin; p. 7, ll. 9-21).
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Tamag in view of Hess as applied to claim 1 above, and further in view of Sutton Research Corporation (GB 1143500; hereby “Sutton”).
Regarding claim 46, modified Tamag discloses the aerosol generating product as discussed above with respect to claim 1, including structure-forming constituents including cellulose derivatives (p. 1, ll. 85-89) such as cellulose fibers (p. 4, ll. 51-54; “web building fibers” as included in Applicant’s specification at para. 16) present in an amount of 20 to 90 parts by dry weight of special active substance constituent are present (p. 2, ll. 6-13).
However, modified Tamag is silent as to the web building fibers are delignified cellulosic fibers.
Sutton teaches a smoking product (title) wherein it is known in the art that the purity of carbohydrates in the raw material is an essential factor in reducing undesirable burning odors and carcinogenic tendencies, and the presence of lignins in the raw material indicate aromatic nuclei which can condense to form carcinogens (p. 1, ll. 48-65), wherein the invention uses a raw material which is as concentrated in cellulose as possible (i.e., having a purity of 85-100%) and where in the preferred material is delignified wood pulp of a high purified commercial grade (p. 1, ll. 66-74) to address the above problems.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tamag’s cellulose material to be delignified as in Sutton in order to prevent the generation of undesirable burning odors and reduce the carcinogens present from burning lignins (Sutton; p. 1, ll. 48-65).
Regarding the claim limitation “the web building fibers…are present in the reconstituted cocoa husk material in an amount greater than about 18% by weight” Tamag discloses that per 100 parts of filler constituent, 10 to 45 parts of active substance constituent, 10 to 45 parts of nitrogen donor constituent, 10 to 60 parts of structure-forming constituent, and 20 to 90 parts by dry weight of special active substance constituent are present (p. 2, ll. 6-13). This gives a range of 150-340 total parts (100+10+10+10+20; 100+45+45+60+90). This means that the structure-forming constituents including the cellulose fibers can be present in a range of 2.94% (10/340*100) up to 40% (60/150*100). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Hess (US 3429316) teaches a tobacco composition incorporating byproducts of a cocoa manufacturing process, specifically cocoa shells or cocoa-shell containing “expeller cake” (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONNY V NGUYEN whose telephone number is (571)272-8294. The examiner can normally be reached Monday - Friday; 7:00 AM - 3:00 PM EST.
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 Y 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.
/SONNY V NGUYEN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755