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
The office action is in response to Applicant’s amendment filed on 11/3/25.
Claims 1-5, 9-14, and 17-20 are pending
Claims 9-14 and 17-20 are withdrawn
No claims are amended
Response to Arguments
Applicant's arguments (filed 11/3/25, pages 5-7) have been fully considered but are not persuasive. Applicant argues: (1) tobacco that is treated with carbon dioxide according to Cowan is not subsequently incorporated into a tobacco product, as required by the presently claimed invention, (2) a person having ordinary skill in the art would not arrive at the method recited in the claims of the present application by combining Robinson and Cowan. The Examiner respectfully disagrees.
First, the only active step of the claimed method is contacting the tobacco material with an effective amount of one or more gases. 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” is not an active step of the method. 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. Moreover, the methods of Robinson and Cowan produce a product which could be used in a further product, similarly as claimed, and thus the limitation “before the processed tobacco is incorporated into a product” does not result in a distinction between the claimed method and the prior art.
Second, 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. Here, the phrase “before the processed tobacco is incorporated into a product,” is broad. To the extent that the prior art demonstrates that the process tobacco material is utilize in any product, such as an intermediate stage product or final product, it meets the claim. The Applicant argues “based on Cowan a person having ordinary skill in the art would fumigate the tobacco using carbon dioxide after the tobacco is put into a final product and sealed in packaging” (emphasis added), but the claim does not require a specific stage or type of product into which the process tobacco is utilized. To the extent that the prior art demonstrates that the tobacco material may be utilized in any product (intermediate, final, or otherwise), it meets the claim.
Moreover, the Examiner does not rely on Cowan to specifically identify the test method utilized in Cowan but rather, 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). While Cowan discusses placing cigarette cartons into a disinfestation chamber, Cowan only discussed specifically utilizing cigarette cartons in relation to a test batch which was performed to demonstrate the efficacy of the invention. (Column 9, lines 4 to 68). Cowan also teaches that carbon dioxide asphyxiation is broadly used for agriculture commodities (Column 1, lines 49 to 68; Column 2, lines 1- 14) and teaches 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). Moreover, Cowan also discusses fumigating cigarette packs (Column 3, lines 41-44). To the extent that the cigarette packs are removed from the fumigation environment and subsequently packaged in the standard cigarette carton, the packs are removed from the gases before being incorporated into a product, similarly as claimed. Thus, Cowan stands to demonstrate that it would be obvious to one having ordinary skill in the art that the tobacco/tobacco products which have undergone carbon dioxide asphyxiation may be used in further products.
The following rejections are maintained.
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 less than about 7 (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]), 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]).
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).
THIS ACTION IS MADE FINAL. 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 Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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/JEFFREY A. BUCKMAN/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755