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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/27/2026 has been entered.
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 Shannon et al. (U.S Pub. No. 20110081528).
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. Shannon discloses well known flavorants such as acetic acid [0033] and 2-methyl-4-vinylphenol [0034]. 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.
Claim(s) 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujisawa et al. (CA2940680) in view of Shannon et al. (U.S Pub. No. 20110081528) 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 Shannon et al. (U.S Pub. No. 20110081528) 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, Shannon and Champion taken together as a whole discloses/suggests the flavoran compound is a combination of 3,5-dimethylcyclopentenolone (column 6 of Champion) and 4-vinyl-2methylphenol ([0033-0034] of Shannon.
Response to Arguments
Applicant’s arguments filed 3/27/2026 have been considered but are moot in view of the new ground of rejection.
Conclusion
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/PHU H NGUYEN/Examiner, Art Unit 1747