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, 19, 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 Claims 9, 13-14, 16-18, 20, 22 and 24-26 are withdrawn.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 § 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, 6-8 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Rabes (US 11,918,025) in view of Perfetti (US 4,924,883).
Regarding claims 1-3 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). Rabes does not explicitly disclose (a) the humectant being combined with nicotine prior to being added to the base sheet and (b) the exact order in which the liquid components are mixed with each other prior to being incorporated into the base sheet.
Regarding (a), Perfetti teaches a cigarette type smoking article (abstract) having a nicotine flavorant (column 10, lines 38-59) that is added to a reconstituted tobacco material (column 12, lines 4-21) that forms a substrate that releases an aerosol (column 10, lines 13-27).
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 of Perfetti to the base sheet of Rabes. One would have been motivated to do so since Perfetti teaches an aerosol forming substrate that is flavored with nicotine.
Regarding (b), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to mix the liquid components in the claimed order. In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to not patentably distinguish the processes. See MPEP § 2144.04 (IV)(C).
Regarding claims 6 and 7, Rabes discloses that the humectant is propylene glycol (column 3, lines 21-22).
Regarding claim 8, Perfetti teaches that 24.03 mg of nicotine is added to a reconstituted tobacco material weighing 0.3014 g (column 12, lines 4-21), which produces a total nicotine content of about 8.0 wt%.
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 teaches away from adding additional tobacco extract that may include nicotine, (b) that it would not have been obvious to modify the order of process steps in light of the PTAB decision in Ex parte Chau, (c) that the claimed invention produces unexpected results, and (d) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the modification as set forth above did not suggest that a tobacco extract is added to the composition of Rabes. Perfetti states that nicotine is added in the form of a flavor (column 10, lines 38-59), however, nowhere does Perfetti teach that the nicotine is contained within a tobacco extract when it is added. This is an assumption of applicant that is unwarranted by the disclosures of either Rabes or Perfetti. Furthermore, even if tobacco extract were added to the composition of Rabes, Rabes does not teach away from adding all amounts of tobacco extract. While Rabes may disclose that a weight percentage of the aqueous soluble fraction should not be raised above 35% (column 2, lines 59-67), Rabes does not teach away from adding tobacco extract so long as that threshold is not exceeded. Finally, Rabes does not directly disclose any impact on mouth feel that pure nicotine has, but rather that the disclosed product has good mouth feel (column 1, lines 50-56).
Regarding (b), Ex parte Chau is not listed as a precedential or informative decision on the current list of precedential or informative PTAB decisions maintained by the Office (https://www.uspto.gov/patents/ptab/precedential-informative-decisions), nor is there any indication in the decision itself that the decision should be considered to set a precedent for future examination. Furthermore, the claims at issue in Ex parte Chau require specific intermediate forms that are more than just a mixture, but rather specific compositions such as a pill in the form of a coated powder matrix that is subsequently coated. These various solid components will not mix together, unlike the liquids of the claimed invention.
Regarding (c), applicant’s allegation of unexpected results is unsupported by objective evidence indicating that the results are truly unexpected as required by MPEP § 716.01(a).
Regarding (d), all examined claims, including the examined independent claim, are rejected as set forth above.
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 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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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.
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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755