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 pre-appeal brief filed 12/18/2025.
Claims 1-5 and 7-18 are pending and are subject to this Office Action.
Claims 11-15 and 19-20 are previously withdrawn.
Claim 6 is cancelled.
Response to Arguments
Applicant's arguments, see pages 1-2, filed 12/18/2025 with respect to the rejection of claim 1 have been fully considered but they are not persuasive.
Applicant’s argument with respect to the water content, see pages 1-2, filed 12/18/2025 with respect to the rejection of claim 1 have been considered but are moot because the new ground of rejection applies a different interpretation of Young for a new modified grounds of rejection that does not rely on any matter specifically challenged in the argument.
On page 2, with respect to (b), the Applicant further argues that Young does not appropriately teach the step of drying the sheet during the compression step between the first pair of rollers.
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 page 3, filed 12/18/2025 with respect to the rejection of claims 4-5 have been fully considered and are persuasive. Upon further review, the prior art of reference Young and Smook do not appropriately teach the step of changing the diameter of a roller or the gap between rollers. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in further view of Nakagawa et al. (US 20150136161 A1).
Applicant's arguments, see page 4, filed 12/18/2025 with respect to the rejection of claims 8-9 have been fully considered but they are not persuasive.
On page 4 the Applicant argues that Young does not appropriately teach “the movable support being moved by the first pair of rollers”, as required by claim 8.
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.
Applicant's arguments, see page 5, filed 12/18/2025 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 notes that the term “extracted tobacco” refers to the material after pressing, and thus the addition of crosslink destruction agent to the tobacco extract with the desired moisture content must necessarily occur after pressing.
The Examiner disagrees.
Young describes the “extracted tobacco” as being the insoluble residue provided during the separation step 16 and prior to pressing 34 (Fig. 2; col. 2, l. 51-52). Irrespective of the addition of crosslink destruction agent which may be added at various steps in the method, it is this tobacco extract component that Young describes as having a moisture content of about 60 to about 85 percent (col. 6, l. 2-5). The Examiner notes that Young further discloses that the crosslink destruction agent may be added to the tobacco extract prior to the pressing step 34 (col. 4, l. 4-8; Fig. 2), indicating that the crosslinking agent does not limit the moisture content at a particular step in the manner described by the Applicant. The Examiner further notes that it would logically follow that the water content would decrease post-compression.
The following is a modified rejection.
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 tollers, 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.
Conclusion
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/C.D./ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755