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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/1/26 has been entered.
Status of the Claims
Claims 1-5, 9-14, and 17-21 are pending and are subject to this office action. This office action is in response to Applicant’s amendment filed on 4/1/26.
Claim 1 is amended.
Claim 21 is new.
Claims 9-14 and 17-20 remain withdrawn
Response to Arguments
Applicant's arguments (filed 4/1/26, pages 5-8) have been fully considered but are not persuasive. Applicant argues: (1) the tobacco compositions described in Robinson are specifically formulated to minimize pH changes, (2) wherein Robinson describes a different product and treatment for a different purpose than Cowan, a person of ordinary skill in the art would not have been motivated to rely on Cowan to combine with Robinson. The Examiner respectfully disagrees.
Regarding argument (1): first, Robinson [0007] generally teaches that storage techniques may be implored to slow the effects of pH changes on smokeless tobacco products and does not state that pH changes are all together stopped or prevented. Moreover, Applicant cites Robinson [0046] in part, to demonstrate that a buffer is added to prevent any significant change in pH. However, Robinson [0046] does not quantify a “significant change in pH.” Moreover, the first line of Robinson [0046] states, in full: “If desired, a buffer can be added to the snus formulation to help maintain the pH levels during shipping and storage without the need for refrigeration.” (emphasis added). The full citation makes it clear that a buffer is not a requirement of the method disclosed in Robinson but rather represents a single embodiment which does not teach away from the general disclosure. See MPEP § 2123(II). Therefore, Robinson does not explicitly teach that the tobacco composition must be specifically formulated to minimize pH changes.
Regarding argument (2): In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Here, Cowan demonstrates the knowledge of one of ordinary skill in the art at the time Cowan was published in 1992 and the “ancient practice” upon which it is based (Column 1, lines 49-68). Cowan further teaches that carbon dioxide asphyxiation is broadly used in agriculture commodity production (Column 1, lines 49 to 68; Column 2, lines 1- 14) and that the variables associated with the process may depend on the tobacco or tobacco products of which is being processed (Colum 2, lines 53-64). Cowan stands to demonstrate that it would be obvious to one having ordinary skill in the art that carbon dioxide fumigation is a known method of preserving tobacco and tobacco products. In view of Robinson and Cowan, it would be obvious to a person of ordinary skill in the art that tobacco products may be stored in a carbon dioxide rich environment to disinfest tobacco and that the carbon dioxide rich environment would have a pH reducing effect on a tobacco while the tobacco was stored in the carbon dioxide rich environment. Thus, where Robinson and Cowan are both generally directed to storage techniques for tobacco products in a carbon dioxide rich environment, a person of ordinary skill in the art would be motivated to combine the teachings of Robinson and Cowan to further understand the general effect carbon dioxide fumigation has on tobacco and tobacco products.
The following rejections are maintained and modified where necessary based on Applicant’s amendments.
Claim Interpretation
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. However, the MPEP further states that “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed…” (MPEP § 2111.04). The active steps of the claimed method are “contacting the tobacco material with an effective amount of one or more gases…” and “storing the pH-treated tobacco material…” The phrase “such that the pH of the tobacco material is at least partially restored to the initial pH on removal of the one or more gases before the processed tobacco is incorporated into a product” does not require steps to be performed and the claim scope is not further limited by the claim language. Thus, the limitation of “such that… incorporated into a product” does not give meaning and purpose to the contacting step as it merely expresses the intended result of using the processed tobacco after it has been processed.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (US 20080173317 A1) and in view of Cowan (US 5167243 A).
Regarding Claim 1, Robinson discloses a method of processing pH-treated tobacco material (A method of preserving tobacco using gas. [0010]) comprising:
contacting at least one pH-treated tobacco material having an initial pH of from about 8 to about 10 with an effective amount of one or more gases (The smokeless tobacco formulation includes particles or pieces of tobacco, and may include other ingredients, such as pH adjusters, buffers, and preservatives. [0009]. The atmosphere within the sealed tobacco package can be further modified by introducing a selected gaseous species. [0010]. The pH is “preferably at least about 7.5. Typically, the pH of that formulation will not exceed about 9" [0045]. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference. See MPEP § 2144.05(I).),
wherein the one or more gases comprises carbon dioxide (The gaseous species utilized may be selected from a list inclusive of carbon dioxide. [0010]),
wherein the one or more gases reduce the pH of the pH-treated tobacco material to a lower pH (The carbon dioxide filled atmosphere packaging will affect the pH-level of the tobacco material by lowering the pH-level upon and through the formation of carbonic acid. [0048]);
storing the pH-treated tobacco material and the one or more gases in a sealed storage container (“Products of the embodiments herein may be packaged and stored in much the same manner that conventional types of smokeless tobacco products are packaged and stored.” [0068]. When the packaged tobacco material is stored in the packaging material, the tobacco is packaged into a sealed package. [0064]), and
wherein the reduction in pH of the pH-treated tobacco material is reversible, such that the pH of the tobacco material is at least partially restored to the initial pH on removal of the one or more gases (Wherein the pH-level drops during storage in a carbon dioxide rich atmosphere, pH-level is restored and the tobacco is absent significant changes upon removal from the high carbon dioxide atmosphere. [0045]-[0048], [0069]).
Robinson does not explicitly disclose that the lower pH of the at least one pH-treated tobacco material is less than about 7. However, the lower pH-level of the at least one pH-treated tobacco is an intended result of the positively recited method steps and it follows that, with the same starting tobacco material having an overlapping pH and the same contacting step with the same carbon dioxide gas, the pH-level of the treated tobacco material would lower similarly as claimed, absent evidence to the contrary. As such, it is the Examiner’s position that the method of Robinson when operated similarly as the Applicant’s claimed process would function is a similar manner as claimed and result in a lowered pH-level of less than about 7.
Robinson discloses wherein the tobacco is packaged with carbon dioxide which is subsequently opened and utilized by a user ([0010]-[0012]) but does not explicitly disclose wherein the pH of the tobacco material is restored to the initial before the processed tobacco is incorporated into a product. Specifically, the tobacco of Robinson, which is removed from the packaging comprising carbon dioxide, is the end user product. However, the process of packaging tobacco in a carbon dioxide rich atmosphere is a known storing and preserving method in the art as described further in Cowan.
Cowan teaches that the treatment of agricultural products with carbon dioxide is an effective disinfestant for insects, including tobacco products (Col 2, lines 12-53). Moreover, as this process relates to tobacco, the tobacco products are placed in a disinfestation chamber comprising a carbon dioxide atmosphere for a few days to a few weeks, wherein they tobacco is removed from the chambers for further processing (Col 2, lines 29-64).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art that the process of storing tobacco discussed in Robinson may be modified such that products are temporarily placed in carbon dioxide rich atmosphere containers before incorporation into a final product as taught by Cowan because Robinson and Cowen are both directed to processes of preserving tobacco materials utilizing carbon dioxide rich environments, Cowen teaches the broad use of storage of tobacco products in a carbon dioxide rich environment to disinfest tobacco, Robinson teaches the effect and control of the carbon dioxide rich environment on the pH of the tobacco, and this merely involves applying known tobacco preservation methods elements to a similar preservation method to yield predictable results.
Regarding Claims 2-4, Robinson discloses a method of processing pH-treated tobacco material wherein at least 20%, about 25% to about 100%, and/or about 50% to about 100% by volume of the one or more gases is carbon dioxide ("Typically, when the tobacco product is flushed with a gaseous species (e.g., a selected gas or mixture of gases), a significant amount, and most preferably virtually all, of the atmosphere within the sealed package is provided by the desired gaseous species. Exemplary gaseous species include nitrogen, argon, carbon dioxide, and the like (e.g., high purity gases that are greater than about 99 percent pure, by weight)" [0064]. Wherein the tobacco product is flushed with a 99% pure gaseous species, and carbon dioxide is elected as the gaseous species, the one or more gases comprises of 99% carbon dioxide. [0064]).
Regarding Claim 5, Robinson discloses a method of processing pH-treated tobacco material wherein the one or more gases consists essentially of carbon dioxide (The gaseous species utilized may comprise of high purity carbon dioxide. [0027]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Robinson in view of Cowan and in further view of Kobal (US 20180271140 A1).
Regarding Claim 21, Robinson discloses a method of processing pH-treated tobacco material to be contained within a pouch or bag, such as the type commonly used for the manufacture of snus ([0010]) but does not teach the use of the tobacco formulation incorporated into an article configured to be used within a non-combustible aerosol provision system. However, Kobal teaches a non-combustible aerosol provision system ([0005], [0047], Fig 1) comprising an article component (flavor inhalation article; [0010]-[0012]) comprising aerosolisable material (the pre-vapor formulation is heated into a vapor. [0060]) wherein a moist smokeless tobacco or snus package is incorporated into the article component ([0006]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the method of Cowan such that the smokeless tobacco product is incorporated into a non-combustible aerosol provision system as taught by Kobal because Cowan and Kobal are both directed to smokeless tobacco products, Kobal teaches the incorporation of a moist smokeless tobacco and/or snus package into a non-combustible aerosol provision system, and this merely involves applying a known component for a known purpose to yield predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicants’ disclosure. Doernemann (US 4989363 A) teaches a process and an apparatus for protecting and/or preserving stored commodities, including tobacco, against deterioration by pest, comprising a substantially gas-tight enclosure of a pesticidal atmosphere comprising carbon dioxide. (Column 1, lines 1-32). The tobacco may be stored in an environment consisting of 60-100% carbon dioxide gas. (Column 3, lines 1-5). It is well known in the art of preserving organic commodities that a high atmospheric concentration of carbon dioxide is toxic to pests, providing a preservative for commodities such as tobacco. (Column 1, lines 15-17).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 9:00-4:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755
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