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 .
Claim Rejections - 35 USC § 103
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.
Claim(s) 23, 26 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (CA2940680) in view of Hong et al. (Food Sci. Bitechnol. 21(4):1163-1172(2012)).
Regarding claims 23, 26 and 28, Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113). In this case, Fujisawa discloses a tobacco product comprising an acetic acid that is derived from tobacco [0042] [0082]. Fujisawa does not expressly disclose 4-vinyl-2methylphenol as flavorant compound. Hong discloses well known flavorants such as acetic acid and 2-methyl-4-vinylphenol (table 2). Therefore, it would have been obvious to one of ordinary skill in the art the time the invention was made to use these flavorants in combination or as alternatives for their flavor properties.
Claim(s) 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (CA2940680) in view of Hong et al. (Food Sci. Bitechnol. 21(4):1163-1172(2012)) as applied to claim 23 above and further in view of Hata (Pub. No. 20150292152).
Regarding claim 24, Fujisawa does not expressly disclose the tobacco comprises vanillin. Hata disclose the tobacco product further comprises a second flavor compound such as vanillin (Table 1). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add vanillin to the tobacco product as taught by Hata for a desired taste.
Regarding claim 25, Hata discloses the tobacco product is a smoking article [0071].
Claim(s) 27 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (CA2940680) in view of Hong et al. (Food Sci. Bitechnol. 21(4):1163-1172(2012)) as applied to claim 23 above and further in view of Champion (U.S 3506446).
Regarding claim 27, Fujisawa does not expressly disclose 3,5 dimethylcyclopentane-1,2dione (corresponding to the claimed 3,5 dimethylcyclopentenolone). Champion discloses well known flavorants such as acetic acid and 3,5 dimethylcyclopentane-1,2dione (column 6). Therefore, it would have been obvious to one of ordinary skill in the art the time the invention was made to use these flavorants in combination or as alternatives.
Regarding claim 29, the combination of Fujisawa, Hong and Champion taken together as a whole discloses/suggests the flavorant compound is a combination of 3,5-dimethylcyclopentenolone (column 6 of Champion) and 4-vinyl-2methylphenol (Table 2of Hong).
Response to Arguments
Applicant's arguments filed 7/3/2026 have been fully considered but they are not persuasive.
Applicant’s arguments filed on 7/3/2026 have been considered but are moot in view of the new ground of rejection.
Applicant also essentially argues that acetic acid and 3,5 dimethylcyclopentane-1,2dione in the reference of Champion are listed as one of many compounds as coffee volatile constituents; there is no motivation to use this flavor within a tobacco product as proposed and neither compound is even taught to be a flavorant. This argument is not persuasive because Champion discloses acetic acid and 3,5 dimethylcyclopentane-1,2dione as desired volatile constituents (corresponding to the claimed flavorant). Therefore, one of ordinary skill in the art at the time the invention was made would pick any of these volatile constituents for their flavor function.
Conclusion
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/PHU H NGUYEN/Examiner, Art Unit 1747
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