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 the Claims
This Office Action is in response to Applicant’s arguments filed 04/30/2026.
Claims 1-5 and 7-18 are pending and are subject to this Office Action.
Claims 5 and 19 are amended.
Claim 21 is newly added.
Claims 11-15 and 20 are withdrawn.
Claim 6 is cancelled.
Response to Amendments
Claim 19, previously withdrawn, has been amended to depend from claim 1. The claim is therefore presently considered for examination. Claim 20 is also considered based on its dependency on claim 19.
Response to Arguments
Applicant's arguments, see pages 7-12, filed 04/30/2026 with respect to the rejection of claim 1 have been fully considered but they are not persuasive.
On pages 7-11 the Applicant argues that Young does not teach the claimed water content of the sheet at the beginning of the step of compressing the sheet, that Young teaches the water content of the tobacco and not the water content of the sheet, and that the water content percentage based on the tobacco material and aqueous liquid is not the same as the water content of the sheet.
The Examiner disagrees.
The Examiner interprets the amount cited in col. 9, lines 29-35 (formed pulp comprises 85% moisture content) as merely one embodiment (Example 1 in Young) of the broader range described by col. 6, lines 2-5 (extracted tobacco has a moisture content greater than about 60%). Thus, any value greater than about 60% is within the scope of Young (see Young col. 8, lines 64-66). Young therefore appropriately makes obvious a method wherein the water content of the sheet at the beginning of the step of compressing is 50-80%. The Examiner only cited col. 6 in the rejection, and did not rely on the specific example of col. 9 for this particular limitation. Notwithstanding this difference, the Examiner maintains that “about 85%” would also make prima facie obvious the range of “about 50-80%”, as obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
Young further teaches that formed pulp is considered to be an extracted tobacco (col. 5, lines 16-22). Thus, within the disclosure of Young, a formed pulp of col. 9 and an extracted tobacco material of col. 6 are determined to be interchangeable. Young further teaches that “pulp is laid in a form which can readily be formed as a sheet”, and does not indicate that a change in moisture content necessarily occurs between a loose pulp and a sheet formation on a belt.
On pages 11-12 the Applicant argues that Young does not teach “drying the sheet during the compression step,” as claimed.
The Examiner disagrees.
Drying is merely a way to reduce the moisture. Young teaches that the series of presses 34 function to dry the sheet (col. 2, lines 64-66). One with ordinary skill in the art would recognize that this may be considered a drying step to remove a portion of the moisture. Inclusion of drying in this step does not preclude another separate drying step.
This may be further evidenced by Smook, which teaches that, as it is more efficient to remove water mechanically than by evaporation, it is beneficial to include mechanical pressing steps in addition to a dryer section (page 250, col. 2).
This would be considered separate from the drying step 60 taught by Young, as including a final drying step does not preclude the process from comprising another, earlier step to dry.
Applicant's arguments, see pages 13-14, filed 04/30/2026 with respect to the rejection of claim 8 have been fully considered but they are not persuasive.
On page 4 the Applicant argues that Young does not appropriately teach “forming the sheet on a movable support, the movable support being moved by the first pair of rollers”, as required by claim 8. Specifically, the Applicant states that the rejection of record does not provide rationale or evidence to show inherency of this function.
The Examiner disagrees.
Young teaches the belt being moved at a constant rate (col. 10, lines 2-5), including through the first rollers (col. 2, lines 61-66; col. 3, lines 43-45; col. 5, lines 35-43). Young further states that the operation of the movable support (fabric belt), such that it moves (col. 10, lines 26-28), is apparent to one having ordinary skill in the art (col. 9, lines 26-28). It would be obvious to one having ordinary skill in the art that a moving fabric belt would be moved by the rollers on which it is positioned, as this is a known method for conveyor belts. At the least, one having ordinary skill in the art would expect that at least some component of the belt would be expected to be moved by the rotation of the first rollers that compress the sheet, as they directly interact with the movable support.
The Examiner notes that these are not mere speculations, but rather known methods in the art that would be expected to be inherent to any conveyor belt. This constitutes an appropriate rationale to determine that the movable support is being moved by the rollers.
Applicant's arguments, see pages 14-15, filed 04/30/2026 with respect to the rejection of claim 18 have been fully considered but they are not persuasive.
On page 5 the Applicant argues that Young does not appropriately teach the water content of the sheet at the beginning of the compression step. Specifically, the Applicant argues that the extracted tobacco material of Young is not explicitly taught to be in sheet form, and that the water content percentage based on the tobacco material and aqueous liquid is not the same as the water content of the sheet.
The Examiner disagrees.
As argued above, the Examiner interprets the amount cited in col. 9, lines 29-35 (formed pulp comprises 85% moisture content) as merely one embodiment (Example 1 in Young) of the broader range described by col. 6, lines 2-7 (extracted tobacco has a moisture content greater than about 60%). Thus, any value greater than about 60% is within the scope of Young (see Young col. 8, lines 64-66). Young therefore appropriately makes obvious a method wherein the water content of the sheet at the beginning of the step of compressing is 50-80%. The Examiner only cited col. 6 in the rejection, and did not rely on the specific example of col. 9 for this particular limitation.
Young further teaches that formed pulp is considered to be an extracted tobacco (col. 5, lines 16-22). Thus, within the disclosure of Young, a formed pulp of col. 9 and an extracted tobacco material of col. 6 are determined to be interchangeable. Young further teaches that “pulp is laid in a form which can readily be formed as a sheet”, and does not indicate that a change in moisture content necessarily occurs between a loose pulp and a sheet formation on a belt.
Applicant's arguments, see pages 17-18, filed 04/30/2026 with respect to the rejection of claim 5 have been fully considered but they are not persuasive.
The Applicant argues that that Nakagawa teaches using a gap to obtain a desired thickness in the sheet forming process, rather than compressing an already formed sheet.
The Examiner respectfully disagrees with the Applicant’s interpretation of the application of Nakagawa.
Nakawaga teaches that the thickness of a sheet may be determined by changing a distance between a pair of rollers ([0046] recites that “a thickness of the sheet tobacco ST is determined by the aforementioned gap G”). One having ordinary skill in the art would recognize that the distance between any pairs of rollers in the production of a sheet may be adjusted in this manner, whether or not prior compression may have occurred. It would be expected that additional rollers with reduced distance between would merely further reduce the sheet thickness.
The following is a modified rejection based on Applicant’s amendments 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 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, 7-10 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Young (US 5,501,237) in view of Smook et al. (Hand Book for Pulp and Paper Technologists; Published: 1992).
Regarding claim 1, Young discloses a method for producing sheet of material containing alkaloids (col. 9, line 63 teaches a reconstituted tobacco sheet, wherein tobacco contains nicotine, which is an alkaloid), the method comprising:
mixing a material containing alkaloids (tobacco material 10) with water (tap water 14) to form a slurry (col. 2, lines 38-44; col 9, lines 18-29);
forming a sheet from the slurry (col. 2, lines 61-64; col. 9, lines 26-29),
and compressing the sheet between a first pair of rollers (series of presses 34; col. 9, lines 33-35), wherein at the beginning of the step of compressing the sheet, a water content of the sheet is comprised between about 50 percent and about 80 percent of the total weight of the sheet (col. 6, lines 2-5 teaches a water content of greater than about 60 percent. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious),
and drying the sheet during the compression step between the first pair of rollers (col. 9, lines 30-35 teaches removal of moisture, and is thus “drying”).
Young does not explicitly teach that the sheet compressed by the first pair of rollers is further compressed between a second pair of rollers, to obtain a desired thickness of the sheet of material containing alkaloids.
Smook, directed to a paper machine that feeds a mixed slurry (papermaking stock/furnish, page 228, col. 2-page 229) to a sheet-forming section (page 228, col. 2; Fig. 16-1, component “Fourdrinier Table”), and a portion to compress the sheet between a first pair of rollers (series of roll presses, page 228, col. 2; Fig. 16-1, component “Press Section”), further teaches a second pair of rollers (series of roll nips) for further compressing the sheet to obtain a desired thickness (page 228, col. 2; Fig. 16-1, component “Calendar Stack”).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by using a second pair of rollers to compress the sheet of material containing alkaloids as taught by Smook because both Young and Smook are directed to sheet making processes, Smook teaches an additional step to help achieve the desired thickness of the sheet of material containing alkaloids, and this involves applying a known technique to improve a similar process in the same way.
Regarding claim 2, Young teaches that the step of forming a sheet includes the step of casting a sheet (col. 5 lines 44-46).
Regarding claim 3, Young teaches that the step of forming a sheet includes the step of extruding a sheet (col. 5 lines 44-46).
Regarding claim 7, Young does not explicitly teach that the method includes the step of regulating a temperature of the first pair or a temperature of the second pair of rollers.
Smook, directed to a paper machine that feeds a mixed slurry (papermaking stock, page 228, col. 2) to a sheet-forming section (page 228, col. 2; Fig. 16-1, component “Fourdrinier Table”), a portion to compress the sheet between a first pair of rollers (series of roll presses, page 228, col. 2; Fig. 16-1, component “Press Section”), and a second pair of rollers (series of roll nips) for further compressing the sheet to obtain a desired thickness (page 228, col. 2; Fig. 16-1, component “Calendar Stack”), teaches that the temperature of the first pair of rollers may be regulated at a heated temperature for increased press dewatering and improved sheet consolidation/strength and lower capital investment (pages 258-259, section “Hot Pressing”).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by including the step of regulating a temperature of the first pair of rollers as taught by Smook because both Young and Smook are directed to sheet making processes with first roller pairs, Smook teaches the improved function and cost associated with using heated rollers, and this involves applying a known technique to improve similar methods in the same way.
Regarding claim 8, Young teaches that the step of forming the sheet includes forming the sheet on a movable support (fabric or wire mesh belt 32; col. 2, lines 61-62; col. 9 lines 25-28), the movable support being moved by the first pair of rollers (col. 10 lines 2-5).
Regarding claim 9, Young’s disclosure focuses solely on the process of producing a reconstituted tobacco sheet and does not explicitly address subsequent manufacturing processes like sizing the thickness of the sheet. Therefore, it is implied that the sheet would naturally be removed from the belt (i.e., movable support) immediately after production.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by removing the sheet from the movable support before the step of compressing the sheet between the second pair of rollers as this involves applying a known teaching to a similar method to yield predictable results.
The Examiner notes that Smook teaches numerous methods for transferring the sheet from the movable support before the step of compressing the sheet between the second pair of rollers.
Regarding claim 10, Young teaches that before removing the sheet from the moveable support, the water content of the sheet is reduced to a value below about 35 percent of the total weight of the sheet (col. 9 lines 53-55 teaches a water content of about 12 to about 13 percent, which anticipates the claimed range).
Regarding claim 16, Young does not explicitly teach that drying comprises the first pair of rollers or the second pair of rollers being heated, in particular being heated by hot fluid.
Smook, directed to a paper machine that feeds a mixed slurry (papermaking stock, page 228, col. 2) to a sheet-forming section (page 228, col. 2; Fig. 16-1, component “Fourdrinier Table”), a portion to compress the sheet between a first pair of rollers (series of roll presses, page 228, col. 2; Fig. 16-1, component “Press Section”), and a second pair of rollers (series of roll nips) for further compressing the sheet to obtain a desired thickness (page 228, col. 2; Fig. 16-1, component “Calendar Stack”), teaches that the temperature of the first pair of rollers may be heated by hot fluid (steam) for increased press dewatering and improved sheet consolidation/strength and lower capital investment (pages 258-259, section “Hot Pressing”).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by heating the first pair of rollers by hot fluid as taught by Smook because both Young and Smook are directed to sheet making processes with first roller pairs, Smook teaches the improved function and cost associated with using heated rollers, and this involves applying a known technique to improve similar methods in the same way.
Regarding claim 17, Young does not teach that the temperature of a roller surface in contact with the drying sheet is comprised between about 120 degrees Celsius and about 250 degrees Celsius.
Smook, directed to a paper machine that feeds a mixed slurry (papermaking stock, page 228, col. 2) to a sheet-forming section (page 228, col. 2; Fig. 16-1, component “Fourdrinier Table”), a portion to compress the sheet between a first pair of rollers (series of roll presses, page 228, col. 2; Fig. 16-1, component “Press Section”), and a second pair of rollers (series of roll nips) for further compressing the sheet to obtain a desired thickness (page 228, col. 2; Fig. 16-1, component “Calendar Stack”), teaches that the temperature of the first pair of rollers may be heated for increased press dewatering and improved sheet consolidation/strength and lower capital investment (pages 258-259, section “Hot Pressing”). Smook further teaches that the temperature of the first pair of rollers may be raised depending on the desired dryness of the sheet (pages 258-259).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by heating the first pair of rollers as taught by Smook because both Young and Smook are directed to sheet making processes with first roller pairs, Smook teaches the improved function and cost associated with using heated rollers, and this involves applying a known technique to improve similar methods in the same way.
It would further be obvious for one having ordinary skill in the art to optimize the temperature of the first rollers, because Smook teaches that temperature of the rollers is a result effective variable, one with ordinary skill in the art would be motivated to optimize this variable to produce the desired paper dryness, and because it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05 (II).
Regarding claim 18, Young teaches that at the beginning of the step of compressing the sheet between the first pair of rollers, a water content of the sheet is comprised between about 50 percent and about 60 percent of the total weight of the sheet (col. 6, lines 5-7 teaches that a water content of the sheet prior to compression is comprised from about 60 to about 85 percent. The claimed range overlaps the range taught by the prior art and is therefore prima facie obvious).
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Young and Smook as applied to claim 1 above, and further in view of Nakagawa et al. (US 20150136161 A1).
Regarding claims 4 and 5, Young teaches that the first pair of rollers includes a first roller and a second roller forming a first gap therebetween (series of presses 34; col. 9, lines 33-35) and Smook teaches that the second pair of rollers includes a third roller and a fourth roller forming a second gap therebetween (page 228, col. 2; Fig. 16-1, component “Calendar Stack”).
Young does not explicitly teach a step of changing the width of the first gap or the width of the second gap.
Nakagawa, directed to a method for producing a sheet of material containing alkaloids ([0036]), the method comprising mixing a material containing alkaloids with water to form a slurry ([0039]); forming a sheet from the slurry ([0040]); compressing the sheet between a first pair of rollers (press rolls 10; Fig. 2; [0043]), teaches changing a distance between the rollers as a function of a desired thickness of the sheet containing alkaloids ([0046]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by changing a width of the first gap or a width of the second gap by changing the distance between rollers as taught by Nakagawa because both Young and Nakagawa are directed to methods for producing a sheet material containing alkaloids using rollers, Nakagawa teaches that it is known in the art to adjust the gap between rollers to obtain the desired sheet thickness, and this involves applying a known teaching to a similar process to yield predictable results.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Young and Smook as applied to claim 1 above, or in the alternative over Young and Smook and further in view of Kumar et al. (US 6216706 B1).
Regarding claim 19, Young teaches that the sheet is formed from the slurry on a movable support (fabric or wire mesh belt 32; col. 2, lines 61-62; col. 9 lines 25-28), the movable support comprising a sheet-like movable and bendable band, the band being made of a temperature resistant material (one having ordinary skill in the art would recognize that the fabric or wire mesh belt of Young would be at least somewhat temperature resistant, as it travels through heated dryers), wherein the band is heated (Young teaches that the sheet is heated as it passes through a tunnel dryer. The movable support, on which the sheet is placed, would also be heated during this step).
In the alternative, Young does not teach that the band is a temperature-resistant material that is heated.
Kumar, directed to a method of producing a sheet of material containing alkaloids (col. 2, lines 59-60) comprising mixing a material containing alkaloids with water to form a slurry and forming a sheet from the slurry (col. 2, lines 60-62), teaches that a movable support band (conveyor belt 14; col. 3, lines 36-42) onto which the slurry is cast may be a temperature-resistant stainless-steel material that is heated as the belt passes through a dryer (col. 3, lines 61-65).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by making the band of a temperature-resistant stainless-steel material as taught by Kumar because both Young and Kumar are directed to sheet-making processes comprising casting a slurry onto a movable support band, Young is silent as to a specific material of the band and one with ordinary skill would be motivated to look to prior art for a known and suitable paper making movable support, Kumar teaches that it is known to use a temperature-resistant stainless steel material that may be heated when passed through a dryer, and this involves applying a known teaching to a similar product to yield predictable results.
Regarding claim 20, Kumar teaches that the movable support comprises a stainless-steel belt (col. 3, lines 61-65), having individually controllable temperature zones (col. 4, lines 55-59, Fig. 1 teach that individually controllable temperature zones may be established on the belt. This would be expected to occur for different temperature steps in the process of Young).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Young, Smook and Nakagawa as applied to claim 4 above, and further in view of Abe et al. (US 5609098 A).
Regarding claim 21, Young teaches that the first pair of rollers includes a first roller and a second roller forming a first gap therebetween (series of presses 34; col. 9, lines 33-35) and Smook teaches that the second pair of rollers includes a third roller and a fourth roller forming a second gap therebetween (page 228, col. 2; Fig. 16-1, component “Calendar Stack”). Nakagawa teaches changing a distance between the rollers as a function of a desired thickness of the sheet containing alkaloids ([0046]).
Young, Smook and Nakagawa do not teach changing a diameter of a roller of the first pair of rollers or the diameter of a roller of the second pair of rollers as a function of a desired thickness of the sheet containing alkaloids.
Abe, directed to rollers for use in a papermaking/sheet-making process (col. 3, lines 58-60), teaches that the distance between the rollers and thus the thickness of the paper may be adjusted by changing a diameter of a roller (col. 5, lines 57-63).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Young by changing the diameter of a roller of the first pair of rollers or the diameter of a roller of the second pair of rollers as a function of a desired thickness of the sheet as taught by Abe because Young is directed to a sheet making process using rollers and Abe is directed to rollers for use in a sheet making process, Abe teaches that it is known in the art to adjust the diameter of a roller to obtain a desired sheet thickness, and this involves applying a known teaching to a similar process 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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/C.D./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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