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 Claims
Claims 1, 3-5, 7-13, 15, 19-20, and 22-23 are pending and are subject to this Office Action.
Response to Amendment
The office action is in response to Applicant’s amendment filed on 09/22/2025.
Claims 1 and 22 are amended.
Claim 2, 6, 14, 16-18, and 21 are cancelled.
Claim 23 is new.
Applicant originally elected claims Group I (1-7 and 14-19) in response to a restriction on 12/05/2023.
Claims 8-13 are withdrawn as being directed to non-elected claims.
Response to Arguments
Applicant's arguments, see pages 5-12, filed 09/22/2025, with respect to the rejection of claims 1-7 and 14-21 have been fully considered and are not persuasive. The Applicant has amended claim 1 to include limitations that were previously presented in claim 21. Specifically, the Applicant has introduced limitations regarding the molded bulk solid composition being molded in a mold.
On pages 5-7, the Applicant argues that in respect to the prior art Advani, which is relied upon to teach the molding of the tubular tobacco product, is silent to refined plant fibers characterized by a Schopper-Riegler degree and fails to disclose any bulk-density ranges as presently claimed. The Applicant further argues that Advani does not teach or suggest that molding is functionally tied to internal porosity and airflow, and merely discloses producing a tubular product without linking molding to creating an air-permeable 3D fiber matrix through which heated air passes to form an aerosol and that the cited references fail to teach the significant advantages achieved by the pending claims.
First, Advani is not relied upon to teach refined plant fibers and bulk-density ranges as claimed. Advani is merely relied upon to teach molding a tubular tobacco product is known in the art and not novel.
Second, in regards to Advani not teaching an “air-permeable 3D fiber matrix through which aerosol passes through", the Examiner notes there is no requirement of air passing through an air-permeable 3D matrix and further notes there is no mention of an "air-permeable 3D fiber matrix through which aerosol passes through” provided in the specification. The specification does recite “without wishing to be bound by any theory, the inventors are of the opinion that the refined plant fibres create a network of cohesive channels within the bulk solid composition so that the heated air passes through the volume of the bulk solid composition of the invention” [0011], and therefore refined plant fibers are assumed to create a network of cohesive channels, but the claim does not require an air-permeable bulk solid composition and therefore the arguments for those reasons alone are not persuasive.
In addition, Advani teaches the tubular tobacco product comprises a hollow bore extending along the longitudinal axis of the tubular tobacco product is provided ([00011]). Therefore, it would be obvious that the bulk solid composition is indeed air-permeable.
In addition, it is known in the art that slurry reconstituted tobacco compositions are air-permeable and it would be obvious to one of ordinary skill in the art that any tobacco product used in this manner needs to be air-permeable in order to generate an aerosol and pass it through the mouth-end of the device. Therefore, the rejection regarding Advani is maintained and provided below.
On page 7, the Applicant further argues that the SR degree of Giacomo cannot be applied to Rabes because it is an example of a “false syllogism fallacy” and the rationale provided by the Examiner is “analogous to stating that because a motorcycle has a motorcycle engine, the bicycle must use a motorcycle engine.”
The Examiner respectfully disagrees.
Rabes is merely silent to a specific SR degree of similar tobacco stem fibers for a similar product; however it would be obvious that a similar product with the same required materials would result in an SR degree that reads on what is claimed since all the other components in the composition are taught by Rabes, absent evidence to the contrary.
Giacomo is merely relied upon to teach the SR degree is known in the art of a similar product, and is therefore not novel. Giacomo is not used to apply a completely different element/part to the product of Rabes, like a motor of a motorcycle to a regular bicycle. Giacomo is teaching a known value of a tobacco fiber that Rabes already teaches is in the composition. Both Giacomo and Rabes teaches the same tobacco plant fibers and therefore the argument is not persuasive and the rejection stands.
On page 8, the Applicant appears to be arguing there would be no motivation for Giacomo to have the SR degree in a 10 degree range as claimed and that there would be no motivation to choose a specific 10 degree SR range in view of a disclosure that passingly states that a pulp suspension of stem material can have at least 30 or at least 50 degrees SR as recited in Giacomo.
The Examiner respectfully does not find the Applicant’s arguments persuasive.
First, Giacomo teaches a SR range that makes what is claimed obvious. Giacomo teaches tobacco stem fibers for a reconstituted tobacco product can be refined to have an SR of at least 50 degrees SR (page 14, lines 2-4), which makes obvious the range claimed of an SR degree of 55 to 65 degrees and is therefore considered prima facie obvious.
Second, the Applicant’s arguments would be in direct conflict with their own specifications disclosure. The instant specification recites a wide range of SR degrees and provides little evidence for why the specific range claimed is critical. There is one single composition, composition 3, that provides a SR degree within the claimed range. The other two examples provided are both outside and lower than the claimed range. Without proper evidence regarding why this range is critical, it would also be obvious for a similar reference that teaches a wide range of SR degrees of refined plant fibers to seemingly choose a range that falls within the claimed range without evidence of the contrary. Therefore, it would be obvious to one of ordinary skill in the art that Giacomo reads on the claimed range of a SR degree from 55 to 65 degrees since Giacomo teaches an SR degree of at least 50 degrees (page 14, lines 2-4).
Further, the prior art only has to teach an SR degree that makes the SR range claimed obvious. The prior art does not need to teach a specific 10 degree range and there is nowhere in the specification that provides a reasoning why a specific 10 degree range would be critical and therefore the rejection is maintained and provided below.
On pages 8-9, the Applicant further argues that Selke cannot be applied to Rabes to teach a density of the composition because Selke only passingly mentions a degree of densification of a sheet after being passed between nip rolls and that density of a sheet would have the same density of a 3D molded composition.
The Examiner respectfully disagrees.
As stated in the non-final office action, Rabes is already considered to teach the claimed density. Rabes discloses the same composition of a bulk solid reconstituted plant composition, but is silent on the bulk solid reconstituted plant composition having a density of 200 to 550 mg/cm³. Since Rabes discloses a similar plant composition with the same constitutes and similar weight percentages of the constitutes, it would be obvious that Rabes would disclose a density in this range. Selke is merely relied upon to teach that similar compositions can have the density claimed and therefore is not novel.
In addition, if there is a specific step or material that differentiates the prior art from the instant application then the Examiner notes that the claims should embody that, however as claimed, a bulk solid reconstituted plant composition with a specific density that is known in the art is not novel. As discussed in the non-final dated 05/22/2025, Selke, directed to a similar plant composition discloses a bulk solid reconstituted plant composition has a preferable density ranging from 300 to 500 mg/cm³ (column 5, lines 64-66). Selke further discloses the preferable density is that for most reconstituted tobacco applications (column 5, lines 64-66). Selke teaches a similar bulk reconstituted tobacco product and even teaches this preferable density is that for most reconstituted tobacco applications. The claimed density is therefore not novel and does not overcome the prior arts of record. Therefore, the argument is not persuasive and the rejection stands.
On page 10, the Applicant further argues that Advani removes intermediate steps in the molding process and queries what intermediate steps are being removed from Rabes.
The Examiner respectfully does not find this persuasive.
Rabes already teaches the tobacco product is shaped. Rabes discloses the reconstituted tobacco (i.e., bulk solid composition) may be shaped (i.e., molded) in the form of a sheet, creped sheet, multilayer sheet, leaves, webs, dust or creped rod (page 6, lines 31-33 – page 7, lines 1-2). Rabes only does not teach a mold is what shapes the bulk solid composition. Advani is merely relied upon to teach a mold shaping a bulk solid composition is known in the art and therefore not novel. Advani’s entire process is not being applied to the product of Rabes, and is merely relied upon to teach a mold can be used to shape a product. The rejection is maintained and provided below.
In addition, Advani teaches threshing can be removed from the process when using a mold ([0010]) which is a step in the process of making disclosed in Rabes, and therefore that step could be eliminated to speed up production.
The following is a modified rejection based on amendments made to the claims and previously applied prior art.
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.
Claims 1, 3-5, 7, 15, 19, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Rabes (WO-2017051034-A1) and further in view of Giacomo et al. (GB 2548543 A), Selke et al. (US 4542755), and Advani (WO-2020064584-A1).
In regards to claim 1, Rabes directed to a reconstituted tobacco for devices that heat tobacco without burning it, discloses a composition (i.e., bulk solid composition) comprising:
A tobacco aqueous soluble fraction, which corresponds to all of the tobacco components that solubilize in water including nicotine (i.e., plant extract) is from 10% to 35% by weight the dry matter of the bulk composition (page 2, lines 3-4). The range disclosed by the prior art overlaps the claimed range of the plant extract representing from 15% to 60% by weight of the dry matter, and is therefore considered prima facie obvious;
Tobacco fibers subject to refining (i.e., refined plant fibers) represent between 30% and 80% of the dry weight of the reconstituted tobacco (page 2, lines 8-9). The range disclosed by the prior art overlaps the claimed range of the tobacco fibers representing from 25% to 75% by weight of dry matter of the bulk solid composition, and is therefore considered prima facie obvious; and
A humectant (i.e., aerosol generating agent) (page 2, lines 5-6);
And the bulk solid composition can be shaped in the form of a creped sheet, multilayer sheet, leaves, webs, or creped rod (i.e., three-dimensional) (page 6, lines 31-33 – page 7, lines 1-2).
Rabes does not explicitly disclose an SR degree in the range of 55 to 65 degrees (I), a density of 200 to 550 mg/cm³(II), and a mold is what molds the bulk solid composition (III).
(I)
Rabes discloses refined plant fibers, but is silent in regards to an SR degree in the range of 55 to 65 degrees.
Giacomo, directed to a tobacco slurry, teaches tobacco stem fibers for a reconstituted tobacco product can be refined to have an SR of at least 30 degrees SR or at least 50 degrees SR (page 14, lines 2-4).
Rabes is silent on the SR values of refined tobacco fibers but Giacomo teaches that refined tobacco fibers are at least 50 SR. The claimed range overlaps the range of the refined plant fibers having an SR of 55 to 65 degrees, and therefore is 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 Rabes with the SR degrees taught by Giacomo because both Rabes and Giacomo are directed to reconstituted tobacco products comprising refined tobacco fibers/stems, Rabes is silent in regards to the SR of fibers used in reconstituted products using similar materials, and this merely involves applying a known characteristic of refined fibers to a similar refined tobacco fiber/stem used for a reconstituted product to yield predictable results.
(II)
Rabes discloses the same composition of a bulk solid reconstituted plant composition, but is silent on the bulk solid reconstituted plant composition having a density of 200 to 550 mg/cm³. Since Rabes discloses a similar plant composition with the same constitutes and similar weight percentages of the constitutes, it would be obvious that Rabes would disclose a density in this range.
In addition, Selke directed to reconstituted tobacco, teaches an adhesive (i.e., plant extract) (column 2, lines 54-57), refined tobacco stem fibers (column 8, lines 5-9), and a humectant (i.e., aerosol generating agent) (column 2, line 68 and column 3, lines 1-4).
Selke, directed to a similar plant composition discloses a bulk solid reconstituted plant composition has a preferable density ranging from 300 to 500 mg/cm³ (column 5, lines 64-66).
Selke further discloses the preferable density is that for most reconstituted tobacco applications (column 5, lines 64-66).
The range disclosed by the prior art overlaps the claimed range of the bulk solid reconstituted plant composition having a density of 200 to 550 mg/cm³ and is therefore considered prima facie obvious.
Therefore, before the effective filling date of the claimed invention, it would be obvious to modify Rabes by making the density of the bulk composition 200 to 550 mg/ cm³, as taught by Selke, because one of ordinary skill in the art would look to a similar reference for a known density in the art of a similar tobacco product, especially when the prior art is silent to one, and this merely involves applying a known suitable density of a similar product to yield predictable results.
(III)
Rabes discloses the reconstituted tobacco (i.e., bulk solid composition) may be shaped (i.e., molded) in the form of a sheet, creped sheet, multilayer sheet, leaves, webs, dust or creped rod (page 6, lines 31-33 – page 7, lines 1-2).
Rabes in view of Giacomo and Selke does not explicitly disclose the bulk solid composition is molded in a mold.
Advani, directed to a method for producing a tubular tobacco product, discloses a tubular tobacco product comprising at least one hollow bore (channel) is produced by a mold device adapted to form the shape of the tubular tobacco product (i.e., cylinder) ([0010]).
Advani further discloses the reconstituted tobacco slurry composition is cast into the mold and then removed from the mold to be used in an aerosol generating device as a direct use and cost-effecting production of final products. ([0010]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Rabes in view of Giacomo and Selke, by making the molded bulk solid composition in a mold, as taught by Advani, because all are directed to reconstituted tobacco products, Advani teaches the mold is cost-effective ([0010]), and this merely involves making an already taught shape with a known method in the art of a similar product to yield predictable results.
In regards to claim 3, Rabes discloses the aerosol generating agent is glycerol, propylene glycol or a mixture of glycerol and propylene glycol (page 3, lines 34-35).
In regards to claim 4, Rabes discloses the aerosol generating agent representing between 8% and 50% by weight of the dry matter of the reconstituted tobacco (page 2, lines 5-6). The range disclosed by the prior art overlaps the claimed range of the aerosol generating agent representing from 5% to 50% by weight of dry matter of the bulk solid composition, and is therefore considered prima facie obvious.
In regards to claim 5, Rabes discloses the reconstituted tobacco sheet comprises tobacco fibers, which is from a tobacco plant, a seed-producing plant (page 2, lines 8-26).
In regards to claim 7, Rabes discloses refined tobacco fibers represent between 30% and 80% of the dry weight of the reconstituted tobacco (page 2, lines 8-9). The range disclosed by the prior art overlaps the claimed range of the tobacco fibers representing from 15% to 85% by weight of dry matter of the bulk solid composition, and is therefore considered prima facie obvious.
In regards to claims 15 and 19, Rabes discloses the bulk solid composition comprises refined plant fibers from the tobacco plant (page 2, lines 8-15).
Rabes further discloses the plant extract comprises nicotine, which is obtained from the tobacco plant (page 2, lines 28-29).
In regards to claim 22, Rabes directed to a reconstituted tobacco for devices that heat tobacco without burning it, discloses a composition comprising:
A tobacco aqueous soluble fraction, which corresponds to all of the tobacco components that solubilize in water including nicotine (i.e., plant extract) (page 2, lines 3-4);
Rabes discloses refined plant fibers (page 2, lines 8-9), but is silent in regards to an SR degree in the range of 55 to 65 degrees.
Giacomo, directed to a tobacco slurry, teaches tobacco stem fibers for a reconstituted tobacco product can be refined to have an SR of at least 30 degrees SR or at least 50 degrees SR (page 14, lines 2-4).
Rabes is silent on the SR values of refined tobacco fibers but Giacomo teaches that refined tobacco fibers are at least 50 SR. The claimed range overlaps the range of the refined plant fibers having an SR of 55 to 65 degrees, 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 Rabes with the SR degrees taught by Giacomo because both Rabes and Giacomo are directed to reconstituted tobacco products comprising refined tobacco fibers/stems, Rabes is silent in regards to the SR of fibers used in reconstituted products using similar materials, and this merely involves applying a known characteristic of refined fibers to a similar refined tobacco fiber/stem used for a reconstituted product to yield predictable results.
Rabes further teaches a humectant (i.e., aerosol generating agent) (page 2, lines 5-6) representing between 8% and 50% by weight of the dry matter of the reconstituted tobacco (page 2, lines 5-6). The range disclosed by the prior art overlaps the claimed range of the aerosol generating agent representing from 10% to 50% by weight of dry matter of the bulk solid composition, and is therefore considered prima facie obvious.
The bulk solid composition can be shaped in the form of a creped sheet, multilayer sheet, leaves, webs, or creped rod (i.e., three-dimensional) (page 6, lines 31-33 – page 7, lines 1-2).
Rabes discloses the same composition of a bulk solid reconstituted plant composition, but is silent on the bulk solid reconstituted plant composition having a density of 200 to 550 mg/cm³. Since Rabes discloses a similar plant composition with the same constitutes and similar weight percentages of the constitutes, it would be obvious that Rabes would disclose a density in this range.
In addition, Selke directed to reconstituted tobacco, teaches an adhesive (i.e., plant extract) (column 2, lines 54-57), refined tobacco stem fibers (column 8, lines 5-9), and a humectant (i.e., aerosol generating agent) (column 2, line 68 and column 3, lines 1-4).
Selke, directed to a similar plant composition discloses a bulk solid reconstituted plant composition has a preferable density ranging from 300 to 500 mg/cm³ (column 5, lines 64-66).
Selke further discloses the preferable density is that for most reconstituted tobacco applications (column 5, lines 64-66).
The range disclosed by the prior art overlaps the claimed range of the bulk solid reconstituted plant composition having a density of 200 to 550 mg/cm³ and is therefore considered prima facie obvious.
Therefore, before the effective filling date of the claimed invention, it would be obvious to modify Rabes by making the density of the bulk composition 200 to 550 mg/ cm³ , as taught by Selke, because one of ordinary skill in the art would look to a similar reference for a known density in the art of a similar tobacco product, especially when the prior art is silent to one, and this merely involves applying a known suitable density of a similar product to yield predictable results.
In regards to claim 23, Rabes discloses the bulk solid composition can be in the form of a creped rod (i.e., cylinder) (page 6, lines 31-33 – page 7, lines 1-2).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Rabes (WO-2017051034-A1) in view of Giacomo et al. (GB 2548543 A) and Selke et al. (US 4542755) and further in view Colloud (US-20200154756-A1).
In regards to claim 20, Rabes discloses a reconstituted tobacco sheet (page 2, lines 1-10). Rabes further discloses the bulk solid composition can be in a form of a creped rod (page 6, lines 31-33 – page 7, lines 1-2), which would be obvious to one of ordinary skill in the art that the composition would then have a network of channels configured to allow air to pass through the volume of the bulk solid composition because a creped layer would create wrinkles and folding that would create air permeable sections and/or channels.
In addition, Colloud directed to a method and apparatus for manufacturing a crimped sheet of material, discloses an aerosol generating article comprising a homogenized reconstituted tobacco product ([0061]).
Colloud further discloses the tobacco composition is manufactured to be crimped sheets which are gathered together to form a continuous rod, wherein the crimp corrugations of the crimped sheet defines a plurality of channels in the rod-shaped component ([0002] and [0051]).
Colloud further discloses the plurality of channels provide air flow through the rod ([0002]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Rabes in view of Giacomo and Selke, by adding channels to the bulk solid composition, as taught by Colloud, because all are directed to reconstituted tobacco products, Colloud teaches the channels provide air flow through the bulk solid composition ([0002]), and this merely involves applying air channels known in the art of a similar product to yield predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/MADELEINE P DELACRUZ/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755