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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/13/2026 has been entered.
Response to Arguments
Applicant's arguments filed 1/13/2026 have been fully considered but they are not persuasive.
The applicant argues that the glass mat of Casey III, et al., “…is not an appropriate starting point…because the Casey mat of glass fibers is part of a substrate of smokeable material, not of a flavouring component as presently claimed.” The applicant also argues that the binder of Case is not for adhering any particles to the carrier. The examiner disagrees. The argued function of Casey being a substrate of smokeable material does not, in any way, prevent the structure of Casey III et al. from also being considered a flavouring component. In particular, Case III, et al. disclose that the component can further contain:
“…optional flavoring agents (e.g. cocoa, licorice, organic acids, menthol, tobacco based flavors, and the like). Preferably the flavorants are added in liquid or spray dried form, preferably at the same time as or after the addition of the aerosol forming material to the binder/water mixture. Alternatively, the flavoring agents can be dry mixed with the material at other stages of the process. (col. 5, 7-14).
Casey III, et al. also further state that the component may be made of carbon/menthol slurry (i.e. flavor particles), aerosol forming materials, and a binding agent to “prevent migration of the flavor material and/or the aerosol forming material” (col. 5, 40-47). This indicates that the binders prevent movement of the flavor particles (i.e. menthol on carbon), and do not only stabilize aerosol forming materials.
Finally, Casey III, et al. explicitly state that:
Preferred substrates of the present invention provide tobacco taste, permit little or no migration of the aerosol former, are simple to manufacture, and are easy to incorporate into smoking articles using conventional equipment. (col. 6, 23-27).
The applicant argues Frankenburg does not disclose that flavoring particles are embedded in between the fibers of a fbrous web of a carrier material because Frankenburg discloses that preformed glass fiber mats are known. The examiner disagrees. First, as stated in the rejection below and in the prior office action, Frankenburg expressly discloses that the tobacco layers are not only bonded on the surface, but also to each other through the interstices of the thin porous mat. Disclosures of other embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (MPEP 2124(II)). Second, Frankenburg disclose a process where the pulverized tobacco and glass fibers are formed into a slurry and then cast. (col. 5, 40-74) It would have been obvious to one ordinary skill in the art that the particles of tobacco would have been adhered to and embedded in between the fibers of the web (i.e. glass fibers).
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.
Claim(s) 1, and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Casey III, et al. (US 5,396,911) in view of Frankenburg (US 2,592,554) and St. Charles (US 5,996,589).
Regarding claim 1, Casey III, et al. disclose a substrate for a smoking article that is composed of a fibrous material, including glass fiber mat, that contains materials to be vaporized and that the coated sheet material can be shredded into strands that can be gathered into rods (col. 3, 56-68). Furthermore, in the case of glass mats, Casey III, et al. disclose that the mixture, “…can be incorporated into (or onto) the glass mat by any means available to the skilled artisan.” (col. 4, 5-7). Please note that, Casey et al. explicitly indicate that the mixture can be incorporated into (i.e. embedded) or onto (i.e. surface coating) the glass mat. Casey et al. do not expressly disclose that the coating is a binder comprising flavoring particles.
Frankenburg discloses a glass fiber mat (i.e. ceramic fibrous carrier) coated with a paste composed of a binder (i.e. polysaccharide) that contains flavor particles (i.e. ground tobacco). The coated mat is then used to make smoking articles (see claim 1). It would have been obvious to one of ordinary skill in the art at the time of filing/invention to use the glass fiber mat coated with a binder containing flavoring particles disclosed by Frankenburg as the coated sheet material in a rod as disclosed by Casey III, et al.
Frankenburg also discloses that the layers of tobacco particles are anchored to each other through the glass fiber mat (col. 5, 28-39). Therefore, the particles do not merely coat the mat, but are embedded between the fibers of the web.
Casey III, et al. disclose using a glass fiber substrate but do not expressly disclose that glass is a ceramic. The classification of glass as a ceramic is debated. However, the St. Charles discloses a similar smoking articles to Casey III, et al. and Frankenburg and disclose an aerosol forming substrate (i.e. flavoring component) formed with a support material, such as ceramic wool (i.e. fiber web, col. 3, 38-48) that is contained within an outer wrap. Various “distillable substances” and flavors are added to the support to provide a “pleasurable sensation” and “desired taste effect” respectively (col. 3, line 49-col. 4, line 7). It would have been obvious to one of ordinary skill in the art at the time of invention to use ceramic wool as disclosed by St. Charles in place of the glass fiber of Casey III, et al. because using one known material in place of another known material for the same purpose is obvious. The results would have bene predictable because both fibers are heat resistant and capable of being coated with binder and particles.
Regarding claim 5, Casey et al. do not expressly disclose that rods are continuous and then cut. First, it is notoriously well known in the art at the time of invention/filing that smokable rods are formed continuously and fed to a garniture to be wrapped in paper and then cut to their desired length. The steps and parameters for the process for making the flavoring material do not add patentable details to this invention, as no structural characteristics are association with the step in the specification. As such, this is 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), (MPEP 2113).
"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 unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) …
"[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 6, Casey III, t al. disclose that, “Each of the above described elements of the cigarette of the present invention is generally provided with a paper overwrap, and individual overwrapped segments are typically combined by the use of paper overwraps” (col. 8, 53-56).
Regarding claims 7 and 8, Casey III, et al. disclose that the smoking article can be formed of a fuel element (i.e. smokeable material) followed by the substrate (flavoring material) and followed by a filter (i.e. filter rod, col 8, 48-52). This results in the flavoring component being located between the smokeable material and the filter rod.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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/Michael J Felton/Primary Examiner, Art Unit 1747