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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/9/2026 has been entered.
Status of the Claims
Claims 1-6, 8, 10-13, 15, and 33-34 are pending and are subject to this Office Action. Claim 1 has been amended. Claim 14 has been cancelled.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 2/09/2026 containing
amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 2/09/2026 have been fully considered but they are not persuasive.
On pages 6-7, the Applicant argues that that claimed use of at least partially heated cylinders produces a measurable and verifiable effect, namely the imitation of moisture reduction during rolling, prior to the final drying step, thereby directly supporting the stated objectives of reduces energy consumption and reduced plant dimensions, which is not disclosed in the prior art. The Applicant further argues that with the specific sequence (portioning, consolidation into a continuous strip, and successive rolling passages), the application of heat directly at the rolling cylinders allows moisture reduction to be initiated in a controlled manner during the progressive thickness reduction itself, rather than being deferred entirely to a downstream thermal drying operation, and the cited prior art does not disclose or suggest such a coordinated sequence or the resulting technical effects. The Examiner does not find this to be persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, Chou teaches heating cylinder to partially dry a sheet of material prior to a downstream drying operation to reduce the load on the further drying process ([0002]). As such, one of ordinary skill in the art would be motivated to modify Iodice to partially heat the cylindrical rollers in the shearing and lamination steps to reduce the load on the further drying process.
On page 8, the Applicant argues that Chou does not teach or suggest applying heat within successive lamination passages that progressively reduce the thickness of an already consolidated strip to micrometer-range values. The Examiner does not find this to be persuasive. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Chou is merely used to teach heating cylinders to partially dry a sheet a material prior to a further drying operation to reduce load on the drying process, and one of ordinary skill would be motivated to make the cylinders of Iodice heated to achieve this purpose, which thus results in wherein said further rolling passages are performed with pairs of cylinders that ate at least partially heated.
On page 8, the Applicant further argues that neither Iodice nor Chou suggest that heating the rollers during successive thickness-reduction steps would achieve the claimed in-line moisture reduction. The Examiner does not find this to be persuasive. The claim does not require an in-line moisture reduction during the rolling passages with pairs of cylinders that are at least partially heated. The claim only requires a moisture reduction during the dry step which occurs after the series of rolling passages, see line 12 “drying said fully rolled strip to bring its liquid content to about 8-15%”. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim 1 has been amended to include the limitations of previously presented claim 14, with no change in the grounds of rejection. As such this action has been made final. The following is a modified rejection based on amendments made to the claims.
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.
Claims 1-2, 4, 8, 11, 13, and 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Iodice (WO2019/157576A1, citations will refer to the English equivalent US2021/0244069) in view of Samfield (US 2,708,175) and Chou (2008/0264589), and as evidenced by Mesh Size Chart – Kramer Industries.
Regarding claim 1, Iodice, directed to producing reconstituted vegetable strips including tobacco ([0055] and [0085]), teaches:
A method for producing reconstituted tobacco (a process for reconstituting powder of vegetable origin [0055], and where the vegetable material may be tobacco [0085]).
The method comprising comminuting solid components of tobacco to a particle size between 10 and 200 mesh ([0069]). As evidenced by Mesh Size Chart – Kramer Industries, 10 – 200 mesh equates to a particle size of 75 – 2000 um. The range taught by the prior art overlaps the claimed range of 20 – 220 um and is therefore considered prima facie obvious.
Mixing said comminuted solid components of the tobacco with water ([0072]), at least one binding agent (agglutinating compound, [0071]) and at least one material to form an aerosol ([0072] humectant agent [0096] such as glycerine and/or propylene glycol) until a mixture with a liquid content of about 30-60% is obtained ([0094]). The range taught by the prior art overlaps the claimed range of 30-50% and is therefore considered prima facie obvious.
Subjecting said mixture to a first lamination (final lamination, [0112]). As the two rollers of the lamination have adjustable spacing from 0.04-2.50 mm ([0112]), and the thickness of the material is defined according to the distance between rollers ([0113]), the first lamination therefore obtains a continuous strip of continuous thickness of about 0.04 to 2.50 mm. The range taught by the prior art overlaps the claimed range of 1-20 mm and is therefore considered prima facie obvious.
Drying said fully rolled strip to bring its liquid content to about 12% ([0156]). The range taught by the prior art falls within the claimed range of approximately 8-15% and is therefore considered prima facie obvious.
Subjecting said mixture to a homogenization and forming step (the step of homogenization in an intensive mixer [0107]) before being subjected to said first lamination (as this occurs before the final lamination [0107).
Iodice does not appear to explicitly disclose (I) the final lamination is in more than one step, (II) subjecting said mixture to said homogenization and forming step for transformation of said mixture into a sequence of discrete separate portions; and subjecting said discrete separate portions to said first lamination step to consolidate said discrete separate portions into the continuous strip, and (III) wherein said further rolling passages are performed with pairs of cylinders that are at least partially heated.
In regard to (I), Iodice clearly suggests that the lamination can occur in multiple steps and that lamination steps are used to control specific dimensions [0044]. Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, to modify Iodice by splitting the final lamination into two so that the continuous strip may be formed to a specific thickness sequentially rather than all at once. Given that the final lamination can be sized to overlap the range of both the continuous strip of 1-20 mm and the fully rolled strip of 90-280 um, it is clear that the final lamination would be suitable for being carried out in two steps which merely involves the transposition of process steps or splitting one step into two where the processes are substantially identical or equivalent in terms of function, manner, and results. See MPEP § 2144.04(IV)(C).
Having the final lamination occur in two steps would yield subjecting said strip, already subjected to said first lamination to a series of further rolling passages until a fully rolled strip having a substantially constant thickness is obtained.
In regard to (II), Samfield, directed to a method of converting tobacco into a suitable form for smoking product (Col. 1, lines 20-25), teaches:
A mixture (i.e. moistened mixture) is conveyed by belt 42 to a roller mill 43 (i.e. lamination step). If desired this belt may be equipped with ridges or flanges 42a which separate the material into small distinct masses (Col. 4, lines 31-33).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify the mixture to be conveyed to the lamination equipment by a belt that may be equipped with ridges which separates the mixture into small distinct masses prior to lamination as taught by Samfield, because both Iodice and Samfield are directed to making sheets of reconstituted tobacco by passing a mixture through lamination rollers, and this merely involves combining a known element (i.e. belt equipped with ridges) by known methods (i.e. to transport a mixture to lamination equipment) to a similar lamination process to yield predictable results.
The intensive mixing of the mixture and then separating the mixture into small distinct masses would read on subjecting said mixture to said homogenization and forming step for transformation of said mixture into a sequence of discrete separate portions. As these portions are then sequentially added to the lamination equipment, this would read on subjecting said discrete separate portions to said first lamination step to consolidate said discrete separate portions into the continuous strip.
In regard to (III), Iodice teaches wherein said further rolling passages are performed with pairs of cylinders (set of cylindrical metal rollers, [0112]). Iodice does not teach wherein the pairs of cylinders are at least partially heated.
Chou, directed to absorbent sheet making, teaches:
A heated cylinder that dries the paper web, helping to reduce load on the further drying process ([0002]).
The process of making sheets of cellulosic material relates to both reconstituted sheets of tobacco and paper tissue or towel making; therein Chou is considered to be an equivalent art. As Chou teaches heated rollers are known in the art for the advantage of drying the sheet, it would then be obvious for one of ordinary skill in the art to partially heat the cylindrical rollers in the shearing and lamination steps to assist in reaching the desired moisture level sooner.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Iodice by using heated cylindrical rollers as taught by Chou, because both Iodice and Chou are directed to making sheets of cellulosic material, Chou teaches that this would dry the sheet, and this merely involves applying a known process (i.e. heated cylinder) to a similar process to yield predictable results.
Regarding claim 2, Iodice further teaches wherein the dried fully rolled strip is subjected to coiling or shredding in wires of predefined dimensions ([0123] cutting steps into coils).
Regarding claim 4, Iodice further teaches wherein the solid components of the tobacco are comminuted with a mill ([0087]).
Regarding claims 8 and 11, Iodice further teaches wherein said mixture is subjected to the homogenization and forming step (the step of pre-lamination and homogenization in an intensive mixture [0107]) to generate a continuous strip (as this occurs prior to the final lamination [0107]) to then be subjected to said first lamination (as the final lamination is split into two steps as discussed with claim 1 previously).
As the rollers of the lamination equipment have a useful length of 500 mm ([0116]), one of ordinary skill in the art is reasonably suggested the use of rollers must result in a substantially constant width because they are compressed between two fixed rollers no larger than the functional width of the rollers. As the useful length of the rollers denotes the possible width length of the continuous strip, it is evident that the continuous strip has a substantially constant width of no more than 500mm, which overlaps the claimed range of between 100 and 2000 mm and is therefore considered to be prima facie obvious.
As the two rollers of the lamination process have adjustable spacing from 0.04- 2.50 mm ([0112]), and the thickness of the material is defined according to the distance between rollers ([0113]), the said mixture subjected to the step of homogenization and forming to form said continuous strip of about 0.04 to 2.50 mm. The range taught by the prior art overlaps the claimed range of between 1 and 10 mm and is therefore considered prima facie obvious.
As the same rollers are used for said first lamination, this reads on wherein, at an output of said first lamination, a single-layer strip of a thickness of 0.04 to 2.5 mm is obtained. The range taught by the prior art overlaps the claimed range of between 1 and 10 mm and is therefore considered prima facie obvious.
Regarding claim 13, Iodice further teaches wherein, in said series of further rolling passages, the mixture is made to rest between one lamination station and a next lamination station (as the final lamination is split into two steps as discussed previously with claim 1, the transition from one step to the next reads on the mixture is allowed to rest).
Regarding claim 33, Iodice further teaches wherein the binding agent is corn starch, potato starch, guar gum, pectins, alginates, carboxymethyl cellulose (CMC), hydroxypropyl cellulose (HPC) or microcrystalline cellulose (MCC) ([0092]).
Regarding claim 34, Iodice further teaches:
A method for processing a continuous strip, comprising: forming a continuous strip made of reconstituted tobacco by the method according to claim 1 (see claim 1).
Winding the continuous strip into a reel ([0124], winding equipment to obtain the coils).
Processing the continuous strip in a machine for making cigarettes ([0127], wherein the final product can be used as wrapping material or as loads for smoking products such as cigarettes).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Iodice (WO2019/157576A1, citations will refer to the English equivalent US2021/0244069) as applied to claim 1 above, and further in view of Ajithkumar (WO2018/215479A1, citations will refer to the English equivalent US20211/53541).
Regarding claim 3, Iodice further teaches wherein the milling step may be performed in milling equipment or other equipment such as crushers or hammer mills ([0087]). Iodice does not teach wherein the solid components of the tobacco are comminuted by grinding.
Ajithkumar, directed to making a sheet of homogenized tobacco material ([0025]-[0027]), teaches:
Grinding tobacco to an average particle size of 30 – 120um ([0077]).
Grinding to this size can open the tobacco cell structure and may improve aerosolization of nicotine from the tobacco ([0077]).
Incorporating the grinding step from Ajithkumar to the process as taught by Iodice would lead one of ordinary skill in the art to achieve a tobacco particle size of 75um to 120um through grinding, as this is the particle size range taught by both Iodice and Ajithkumar.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Iodice by incorporating the grinding tobacco step as taught by Ajithkumar to achieve a particle size of 75 um to 120 um through grinding, because both Iodice and Ajithkumar are directed to a method of making a tobacco material, Ajithkumar teaches that grinding particles to this size may improve aerosolization of nicotine from the tobacco, and this merely involves applying a known method (i.e. comminuting through grinding) to a similar process to yield predictable results.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Iodice (WO2019/157576A1, citations will refer to the English equivalent US2021/0244069) as applied to claim 1 above, and further in view of Pons-Andreu (2007/0077318).
Regarding claim 5, Iodice further teaches:
Wherein the milling step may be performed in milling equipment or other equipment such as crushers, hammer mills, or other equipment similar to comminution ([0087])
The milling step may be performed on at least one vegetable material such as cocoa ([0086])
Iodice does not teach wherein the solid components of the tobacco are comminuted with by crushing with a cryogenic rung mill.
Pons-Andreu, directed to processing cocoa ([Abstract]), teaches:
Milling the cocoa beans utilizing a cryogenic mill, or adapting pin mills and hammer mills with a preliminary cryogenic step ([0033]).
An advantage of the cryogenic mill is that is avoids oxidation by use of an inert atmosphere.
Therein it would be obvious for one or ordinary skill in the art to incorporate the cryogenic pin mill as taught by Pons-Andreu to the process as taught by Iodice, as both tobacco and cocoa beans are vegetable materials, and Iodice teaches that the process may be used on other vegetable materials such as cocoa. Thus the advantage of the cryogenic mill to avoid oxidation would be known to one of ordinary skill in the art to apply to cocoa as well as tobacco and other vegetable materials.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Iodice by incorporating the cryogenic pin mill to comminute as taught by Pons-Andreu, because both Iodice and Pons-Andreu are directed to a method of processing vegetable materials, Pons-Andreu teaches that a cryogenic mill avoids oxidation of the vegetable material, and this merely involves applying a known method (i.e. comminuting through a cryogenic pin mill) to a similar process to yield predictable results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Iodice (WO2019/157576A1, citations will refer to the English equivalent US2021/0244069) as applied to claim 1 above, and further in view of Perkins (U.S. 3,861,400) as evidenced by Colloid Mill – Fruit Processing Machine.
Regarding claim 6, Iodice does not teach wherein the mixture configured is subjected to: a roughing step for passage through at least one pair of grooved cylinders, and/or a refining step by passing through at least one pair of refining cylinders until the mixture is brought to a particle size of no more than 20 pm.
Perkins, directed to smoking products including reconstituted tobacco sheets (Col. 1, lines 1-10) teaches:
Passing a tobacco slurry through a colloid mill to remove any lumps which may have formed from coagulation, and then casting that slurry to make a tobacco sheet (Col. 3, lines 20-40)
The rotor and stator components of the colloid mill are considered to be a pair of refining cylinders. As evidenced by Colloid Mill – Fruit Processing Machine, colloid mills are known in the art to produce a particle size of 2-50 um, which overlaps the prior art of no more than 20um. The tobacco slurry as taught in Perkins is subjected to the same step and would come to the same result, as less than 20 micron particle size is just a result of the refining.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Iodice by incorporating the refining step through the colloid mill as taught by Perkins, because both Iodice and Perkins are directed to a method of producing tobacco sheets, Perkins teaches that the colloid mill removes any agglomerates that may have formed, and this merely involves applying a known method (i.e. refining through a colloid mill) to a similar process to yield the predictable result of refining particles.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Iodice (WO2019/157576A1, citations will refer to the English equivalent US2021/0244069) as applied to claim 1 above, and further in view of Smith (US 4,446,678).
Regarding claim 10, Iodice further teaches wherein said first lamination of the mixture is carried out by rolling said mixture with a unit comprising at least a pair of rolling cylinders (two metallic rollers of the pre-lamination equipment, [0100]-[0101]). The mixturing of the mass to be laminated, which occurs before lamination steps, is used for the opening of cellulose fibers ([0098]). Iodice does not teach wherein the lamination unit comprises a lobed feeder.
However, Smith, directed to a plant material processing machine, discloses:
A machine for the continuous physical processing of plant matter using intermeshing multilobed rollers (col. 1, lines 36-39), the machine capable of carrying out physical processing with a large number of different material types (col. 1 lines 50-53).
Material fed between the multilobed rollers is subjected to compressive and shearing forces, resulting in a controllable degree of particle fracture or cell rupture in the material being processed (col. 1, lines 57-63).
Drive torque for the rollers can be transmitted through the intermeshing lobes and therefore the drive mechanism for the machine can be less complicated, less expensive, and more efficient (col. 2, lines 4-9).
As Iodice teaches opening of cellulose fibers of the material prior to lamination, it would be obvious to one of ordinary skill in the art to implement to the lobed feeders of Iodice prior to the rolling cylinders of the lamination equipment, and thus defining wherein said first lamination of the mixture is carried out by rolling said mixture with a unit comprising a lobed feeder and at least a pair of rolling cylinders.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Iodice by including multilobed rollers to rupture the cells of the material being processed as taught by Smith, because both Iodice and Smith are directed to plant processing, Smith teaches that intermeshing lobes are less complicated, less expensive, and more efficient, and this merely involves applying a known technique of cell rupture of a plant material using lobed rollers to a similar process to yield predictable results.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Iodice (WO2019/157576A1, citations will refer to the English equivalent US2021/0244069) as applied to claim 1 above, and further in view of Gindrat (US2016/0286852).
Regarding claim 12, Iodice does not teach wherein the strip, already subjected to said first lamination, is subjected to stratification until a multilayer strip having a thickness of about 2 -20 mm is obtained.
Gindrat, directed to combining tobacco sheets ([0001]), teaches:
An apparatus for combining sheets of tobacco ([0004] – [0009]). The apparatus and method is considered to “subject stratification” on the tobacco sheets.
A multilayer strip would be obtained by subjecting the strip made after the first lamination step in Iodice, to the apparatus for combining sheets of tobaccos as taught in Gindrat, of which the second sheet for combining would be an identical sheet previously made with Iodice. As the multilayer strip would be made from two sheets of tobacco with a thickness of 0.02mm to 2.5mm, as discussed previously, the total thickness of the multilayer strip would thus be 0.04mm to 5mm. The claimed range of approximately 2 to 20mm overlaps the range taught by the prior art and is therefore considered prima facie obvious.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Iodice and incorporate the stratification step as taught by Gindrat, because both Iodice and Gindrat are directed to sheets of tobacco, and this merely involves applying a known method (i.e. combining sheets of tobacco) to a similar process to yield the predictable result of a multilayer strip.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Iodice (WO2019/157576A1, citations will refer to the English equivalent US2021/0244069) applied to claim 1 above, and further in view of Clearman (U.S. Patent No. 5,247,947).
Regarding claim 15, Iodice further teaches:
Wherein said drying comprises passage of said fully rolled strip through a dryer ([0076]).
The moisture percent after drying is not limited to the standards as described in the examples ([0138]).
Iodice does not teach wherein the dryer recirculates air.
Clearman, directed to smoking articles ([Col. 2, lines 14-22)]), teaches:
A recirculated air controlled dryer which dries the extrudate to a moisture content of about 7 to 8 percent (Col. 15, lines 25-45).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Iodice by incorporating the recirculating air dryer as taught in Clearman to dry the material to 7-8% moisture, because both Iodice and Clearman are directed to tobacco products, Clearman teaches the recirculating air dryer reduces the moisture content of the material, and this merely involves applying a known apparatus (i.e. air dryer) to a similar process to yield predictable result of a dried strip to a specific moisture level.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755