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, 3-14 and 16-36 are pending.
Claims 1, 3-12, 16-18 and 27-33 remain withdrawn.
Response to Arguments
Applicant's arguments filed 7/30/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
McAdam relates, amongst other things, to a smoking article and to the application of casing materials onto the tobacco of the smoking article (e.g. see column 2, lines 11 to 15). Sugar is noted as being one casing material (see column 2, line 62 to column 3, line 4). McAdam further recites a list of sugars and related materials, being "cane sugar, invert sugar, fruit sugar from fruit juices, such as prune juice for example, demerara sugar, maple sugar, sucrose, honey, caramel and molasses".
As acknowledged by the Examiner, McAdam fails to teach or suggest the use of "one or more isolated sugars" that are necessitated by the claims of the present application in a smokeable sheet material. Indeed, the list of sugars and related materials that McAdam teaches can comprise the casing material are generally not isolated sugars.
Examiner Response A:
The Examiner respectfully disagrees. McAdam expressly teaches using sucrose which is an isolated sugar according the definition provided in the specification (bottom of page 7 of instant specification).
Applicant Argument B:
Prakash relates, amongst other things, to functional sweetener compositions and orally ingestible compositions that comprise them (see, for example, paragraph [0002]). The examples and claims of Prakash are generally directed to such sweetener compositions comprising at least one high potency sweetener (such as rebaudioside A), at least one sweet-taste improving composition, and at least one functional ingredient (such as rubisco protein). Paragraph [0871] of Prakash, as referenced by the Examiner, provides an extensive list of what is meant by the term "orally ingestible composition", including a multitude of "food, beverage, pharmaceutical, tobacco, nutraceutical, oral hygienic [and] cosmetic products".
Paragraph [0824] of Prakash, also cited by the Examiner, describes a functional sweetener composition "comprising at least one functional ingredient and at least one natural and/or synthetic high-potency sweetener in combination with at least one sweet taste improving carbohydrate additive and at least one sweet taste improving inorganic salt additive" (emphasis added). This paragraph also provides a long list of examples of carbohydrate additives, among which are allose, altrose, gulose, idose, talose, psicose, sorbose, tagatose, lyxose, ribose, ribulose and xylulose.
In order to arrive at the smokable sheet of claim 13 of the present application, the skilled person would have to adapt the smokeable filler material of McAdam by selecting a functional sweetener composition disclosed by Prakash to replace the sucrose disclosed by McAdam. The skilled person would not do this, as they would recognize that the functional, high-potency sweetener compositions disclosed by Prakash are not equivalent to or interchangeable with sucrose used in the casings disclosed by McAdam.
What is more, in order to arrive at the subject matter claimed in the present application, the skilled person would also have to select one or more of allose, altrose, gulose, idose, talose, psicose, sorbose, tagatose, lyxose, ribose, ribulose, xylulose from the extensive list of carbohydrate additives disclosed by Prakash. Such a selection could not be based on any advantage associated with these specific sugars because, as previously discussed, both McAdam and Prakash are also silent on these specific isolated sugars being capable of reducing the level of one or more TSNAs in smoke generated upon use of a smoking article.
There is, therefore, no motivation to combine the smokeable filler material of McAdam with a select few carbohydrate additives from a modified Prakash, except with the hindsight that doing so would provide a smokeable sheet material which, when incorporated into a smoking article, would reduce the level of one or more TSNAs in smoke generated upon use of said smoking article compared to a control smoking article.
Examiner Response B:
The Examiner respectfully disagrees. While Prakash teaches a functional sweetener composition, the sucrose is part of a list of isolated sugars ([0824]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted sucrose with another isolated sugar in the list of isolated sugars provided by Prakash with a reasonable expectation of success and predictable results.
Furthermore, the courts have held that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem and it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See MPEP 2144 IV.
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) 13, 14, 19-26, 34, 35 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6397852 (McAdam hereinafter) in view of US 20080107775 (Prakash hereinafter).
Regarding claims 13, 34 and 36, McAdam teaches a smokeable sheet material for inclusion in a smoking article (col. 4, lines 24-25), the sheet material comprising:
a filler comprising glycerol and propylene glycol (col. 2, lines 29-66); and
one or more sugars (col. 2, lines 29-66), including sucrose (col. 2, lines 62-65).
McAdam does not expressly teach that the sugar is one of the claimed sugars.
Prakash teaches sweeteners and methods for making and using them (abstract) including in tobacco products, which are defined as smoke and smokeless tobacco products such as snuff cigarette, pipe and cigar tobacco, and all forms of tobacco such as shredded filler, leaf, stem, stalk, homogenized leaf cured, reconstituted binders and reconstituted tobacco from tobacco dust, fines or ether sources in sheet, pellet or other forms, tobacco substitutes formulated from non-tobacco materials, dip or chewing tobacco ([0871]). Prakash teaches that functional sweetener compositions include at least one sweet taste improving carbohydrate additive, including tagatose, sucrose, glucose, ribulose, fructose, arabinose, lyxose, allose, altrose, idose, gulose, idose, talose, xylulose, psicose, sorbose, and ribose ([0824]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted sucrose with tagatose, ribulose, lyxose, allose, altrose, idose, gulose, idose, talose, xylulose, psicose, sorbose, or ribose in the tobacco product of McAdam, as suggested by Prakash, with a reasonable expectation of success and predictable results.
Regarding the limitation, “wherein the level of one or more TSNAs in smoke generated upon use of the smoking article into which the smokable sheet material is incorporated is reduced compared to a control smoking article,” the courts have held that a material and its properties are inseparable therefore if the prior art teaches the identical chemical structure, the properties applicant discloses are necessarily present. See MPEP 2112.01 I and II.
Regarding claims 14, 19 and 20, McAdam teaches that the filler comprises a binder, specifically a cellulosic or alginic binder (col. 3, lines 51-53) and a filling agent, specifically calcium carbonate (col. 3, lines 42-45).
Regarding claims 21 and 35, McAdam teaches that the smokeable sheet material comprises less than 15% by weight of the isolated sugars by weight of the smokeable sheet material (col. 2, lines 51-52).
Regarding claims 22 and 24, McAdam teaches that the smokable sheet material comprises 5% or less tobacco material, including no tobacco material (col. 3, lines 18-24).
Regarding claim 23, McAdam teaches that the diluent is glycerol and the glycerol is present in the smokeable sheet material in an amount of about 15% or less by weight of the smokeable sheet material (col. 2, lines 42-43).
Regarding claims 25 and 26, McAdam teaches that the smokeable sheet material is in a sheet form (col. 4, lines 40-42), and in shredded smokeable sheet material (col. 4, lines 37-39).
Regarding the limitations that the smokeable sheet material is a wrap for a tobacco rod, this limitation constitutes intended use of the smokeable sheet material. The courts have held that a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Thus these limitations do not differentiate the smokeable sheet material from the smokable sheet material of McAdam.
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.
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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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