DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Claims 4-5, 10-12, 15, 21, 23 and 27-36 are cancelled. Claims 9, 13-14, 16-18, 20, 22 and 24-26 are withdrawn. Claims 1-3, 6-8 and 37 are presently examined.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 37 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 37, the claim recites the limitation “combining the pre-mixture with the concentrated extract to provide a modified extract having a higher nicotine concentration than the nicotine concentration of the concentrated extract,” which does not have support in the specification. While the specification does state that nicotine is delivered to the concentrated extract using the pre-mixture [0070]. However, nowhere is it explicitly stated that the concentrated
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 8 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Rabes (US 11,918,025) in view of Rojo-Calderon (US 11,632,978) and Gao (US 9,521,864).
Regarding claims 1-3, 8 and 37, Rabes discloses a process for manufacturing a reconstituted tobacco (column 3, lines 58-60) in which tobacco parts obtained from tobacco leaves are mixed with water in order to extract the water-soluble products of the tobacco (column 3, lines 61-63), the water-soluble products are separated from the tobacco fibers (column 3, lines 64-65), the tobacco fibers are formed into a base sheet (column 3, lines 66-67), the water soluble products obtained during the extraction are concentrated (column 4, lines 1-2), and the water soluble products are incorporated along with a humectant into the base sheet in order to form a reconstituted tobacco sheet (column 4, lines 3-6). The reconstituted tobacco sheet has less than 1.22 wt% nicotine in various embodiments (column 6, lines 18-36). Rabes does not explicitly disclose (a) the humectant being combined with nicotine prior to being added to the base sheet and (b) adding nicotine in a solution that consists only of nicotine and a humectant.
Regarding (a), Rojo-Calderon teaches an aerosol generating article having an aerosol generating substrate (abstract) made from reconstituted tobacco (column 7, lines 31-36) having a varied nicotine content to provide customized performance (column 8, lines 66-67, column 9, lines 1-6). The nicotine is an additive (column 7, lines 9-30).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the nicotine additive of Rojo-Calderon to the base sheet of Rabe. One would have been motivated to do so since Rojo-Calderon teaches an aerosol forming substrate that contains a nicotine additive to provide customizer performance.
Regarding (b), Gao teaches a method for stabilizing nicotine and incorporating it into a cellulosic product (column 1, lines 54-67) in which liquid nicotine is mixed with a diluent that is a humectant at between 2 wt% and 75 wt% (column 2, lines 64-67, column 3, lines 1-16), which is higher than the nicotine concentration of the sheet of Rabes. Gao additionally teaches that diluting nicotine allows the nicotine to become stabilized (column 2, lines 64-67, column 3, lines 1-16) so that the nicotine becomes absorbed into the pores of the cellulosic fiber (column 4, lines 34-50).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the nicotine addition method of Gao to add the nicotine of Rojo-Calderon to the base sheet of Rabes. One would have been motivated to do so since Gao teaches a method for adding nicotine that stabilizes the nicotine in cellulosic fiber, which the reconstituted tobacco sheet of Rabes must have since tobacco is a plant.
Regarding claims 6 and 7, Gao teaches that the diluent is propylene glycol (column 3, lines 17-67, column 4, lines 1-4).
Response to Arguments
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that Rabes and Perfetti do not teach the advantages provided by the claimed invention, (b) that Rabes and Perfetti could not be combined since Perfetti is directed to a traditional combustion cigarette, (c) that Perfetti is directed to adding nicotine to a finished sheet rather than during a papermaking process, (d) that Rabes discloses that nicotine delivery should be reduced not increased, (e) that there is no motivation provided to change the order of process steps, (f) that the features of claim 37 are not taught by the cited references, and (g) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), rationale different from applicant’s is permissible to support a rejection under 35 USC 103. See MPEP § 2144 IV. In this case the cited references teach all the features of the claimed invention including motivation to combine the references.
Regarding (b), applicant’s arguments have been fully considered and are persuasive, however, upon further consideration, new grounds of rejection are entered as set forth above.
Regarding (c), applicant does not claim a papermaking process. Instead applicant merely claims forming a base sheet from a fibrous portion. While Rabes does disclose a papermaking process, this feature is not relevant to the combination since the extract components are applied to the base sheet of Rabes after it has already been formed, not during the papermaking process itself.
Regarding (d), Rabes discloses that the nicotine content can range from between 0.45 wt% (column 6, lines 25-36) to 1.37 wt% (column 7, lines 10-19), while remaining within the parameters of Rabes. Some amount of nicotine could therefore be added to the sheet of the embodiment of Rabes with 0.45 wt% nicotine without exceeding the overall nicotine concentration that results in undesirable throat irritation.
Regarding (e), the rationale referred to is not relied upon in the instant Office action.
Regarding (f), applicant’s arguments have been fully considered and are persuasive, however, upon further consideration, new grounds of rejection are entered as set forth above.
Regarding (g), all examined claims, including the examined independent claims, are rejected as set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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