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
Claims 19, and 23-36 are pending and are subject to this Office Action. Claim 19 is amended. Claims 1-18, and 20-22 are cancelled.
Response to Amendments
The amendments to the specification and the claims filed on August 22, 2025 are acknowledged. The 112(b) rejection of Claims 19, and 23-36 have been withdrawn due to the amendments.
Response to Arguments
Applicant' s arguments, see pgs 6-11, filed August 22, 2025, with respect to the rejection(s) of claims 19, and 23-36 under 35 U.S.C. 103 have been fully considered but they are not persuasive.
On pg. 7-9, Applicant argues that Coleman is a completely unsuitable starting point from which to formulate an obviousness objection to independent claim 19 because Coleman clearly relates to producing solid tobacco mixtures which have enhanced flavours and aromas whilst independent claim 19 relates to a method for producing a liquid tobacco extract. Applicant further argues that Coleman is non-analogous art to the present invention. In response to applicant's argument that Coleman is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Coleman discloses a method of producing a tobacco extract, wherein the gaseous volatile products of the extraction are collected (col 2, ln 9-28; A tobacco blend including a first and second tobacco material is heated to an elevated temperature to extract volatile compounds. The extracted compounds form an extract of flavorful substances comprising a complex mixture of volatile, semi-volatile, and non-volatile aroma/flavor components; col 7, ln 60 – col 8, ln 20, Example 1 shows that gaseous products of the extraction are collected). While Coleman does not explicitly disclose that the gaseous volatile products of the extraction are condensed to form a liquid, one of ordinary skill in the art would have been motivated condense the products because Buehler demonstrates that condensation is a preferred method of converting a gaseous volatile mixture to a liquid flavor extract which can be added to a conventional cigarette or e-cigarette (Buehler, pg 8, ln 4-15, pg 1, ln 1-14). As the central distinction between Coleman and the present invention is a simple phase change, the argument is not persuasive because Coleman is analogous art to the present invention.
On pg. 8, Applicant argues that Coleman directly discourages the skilled person from heating first and second tobacco materials to different temperatures and consequently teaches away from providing a second extraction temperature T2 be at least 10 degrees Celsius lower than the first extraction temperature T1. Applicant further argues that that having the first and second tobacco materials in direct contact with each other as they are heated is essential to the core of the invention described in Coleman because this facilitates Maillard reactions between the nitrogen-based compounds in the first tobacco material and the sugars in the second tobacco material. While Coleman describes that the inventors believe that the flavorful and aromatic substances produced in accordance with the present invention is largely
due to the Maillard reaction between the nitrogen source in the first tobacco material and the sugar source in the second tobacco material, neither of Buehler or White-802 necessarily prevents a tobacco blend from being used as a first starting material or a second starting material. Notably, Applicant describes in the specification that each of the first tobacco starting material and the second tobacco starting material
may comprise a combination of two or more natural tobacco types. Further, one of ordinary skill in the art would have recognized that the flavor compounds yielded from the specific blend described by Coleman can be combined with flavor compounds from other tobacco types/blends. Therefore, Coleman does not necessarily teach away from the combination, and the argument is not persuasive.
On pg. 9, Applicant argues that the proposed modification of Coleman in view of Buehler and White-802 would change the principle of operation of the Coleman because Coleman suggests that the method avoids the production of a tobacco extract (Coleman, col 2, ln 1-6). Examiner does not find the argument persuasive because Coleman states that a tobacco blend is heated to yield gaseous volatile, wherein the gaseous volatile products of the extraction are collected (col 2, ln 9-28; A tobacco blend including a first and second tobacco material is heated to an elevated temperature to extract volatile compounds. The extracted compounds form an extract of flavorful substances comprising a complex mixture of volatile, semi-volatile, and non-volatile aroma/flavor components; col 7, ln 60 – col 8, ln 20, Example 1 shows that gaseous products of the extraction are collected). While Coleman does not state that the gases are condensed, the suggested intention of avoiding the production of an extract does not necessarily prevent one of ordinary skill in the art from condensing gaseous products to form a liquid tobacco extract, as claimed. Furthermore, Buehler provides a clear motivation to do so because condensation is a preferred method of converting a gaseous volatile mixture to a liquid flavor extract which can be added to a conventional cigarette or e-cigarette (Buehler, pg 8, ln 4-15, pg 1, ln 1-14). Therefore, the argument is not persuasive.
The following is a modified rejection based on amendments made to the claims.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 19, 23-33, and 35-36 are rejected under 35 U.S.C. 103 as being unpatentable over Coleman (US 6,298,858 B1, cited on the IDS dated 10/21/2022) in view of Buehler (WO 2017/089576 A1) and White-802 (US 5,038,802 A) as evidenced by Klipfel (US 2017/0273347 A1), Banyasz (US 4,497,330 A), Reich (US 2006/0237024 A1), Karles (US 2017/0245543 A1), and White-841 (US 6,591,841 B1).
Regarding Claim 19, Coleman, directed to tobacco extraction (col 2, ln 9-28 describes a method of extracting volatile compounds from a tobacco blend), teaches a method of producing a blended tobacco extract (col 2, ln 9-28; A tobacco blend including a first and second tobacco material is heated to an elevated temperature to extract volatile compounds. The extracted compounds form an extract of flavorful substances comprising a complex mixture of volatile, semi-volatile, and non-volatile aroma/flavor components; col 7, ln 60 – col 8, ln 20, Example 1 shows that gaseous products of the extraction are collected), the method comprising the steps of:
preparing a first tobacco starting material having a first reducing segar content S1 and a first nicotine content N1 (col 2, ln 9-28; The tobacco blend includes a first and second tobacco starting material; col 4, ln 45-53; The first tobacco starting material may be burley or Maryland tobacco. Burley tobacco and Maryland tobacco generally have high nitrogen source contents and low sugar source contents. col 4, ln 13-17, Coleman uses the term sugar source to refer to reducing sugars);
preparing a second tobacco starting material having a second reducing sugar content S2 and a second nicotine content N2 (col 2, ln 9-28; The tobacco blend includes a first and second tobacco starting material; col 4, ln 45-53; The second tobacco starting material may be flue-cured or Turkish tobacco. Flue-cured tobacco and Turkish tobacco generally have low nitrogen and high sugar source contents),
wherein the second reducing sugar content S2 is higher than the first reducing sugar content S1 of the first tobacco starting material (col 4, ln 45-53; The first tobacco starting material may be burley or Maryland tobacco. The second tobacco starting material may be flue-cured or Turkish tobacco. Burley tobacco and Maryland tobacco generally have high nitrogen source contents and low sugar source contents. On the other hand, flue-cured tobacco and Turkish tobacco generally have low nitrogen and high sugar source contents. The second reducing sugar content S2 (flue-cured) is higher than the first reducing sugar content S1 (burley)),
wherein the first tobacco starting material and the second tobacco starting material are different from each other (col 4, ln 45-53; The first tobacco starting material may be burley or Maryland tobacco. The second tobacco starting material may be flue-cured or Turkish tobacco), and
wherein the first tobacco starting material and the second tobacco starting material have not been subjected to a prior extraction (col 2, ln 9-28; Coleman does not mention subjecting the first and second tobacco starting material to a prior extraction), and
wherein, in the step of preparing the tobacco starting materials, the tobacco is not subjected to any treatment to alter the pH of the tobacco (col 2, ln 9-28; Coleman does not mention subjecting the first and second tobacco starting material to any treatment to alter the pH of the tobacco);
heating the first tobacco starting material at a first extraction temperature T1 (col 2, ln 9-28, col 6, ln 42-48; A tobacco blend including a first and second starting tobacco material is heated to a temperature between 250° F to 350° F extract volatile compounds);
heating the second tobacco starting material at a second extraction temperature T2 (col 2, ln 9-28, col 6, ln 42-48; A tobacco blend including a first and second starting tobacco material is heated to a temperature between 250° F to 350° F extract volatile compounds. The first extraction temperature T1 and the second extraction temperature T2 are the same temperature),
collecting volatile compounds released from the first and the second tobacco starting materials during heating, and forming the tobacco extract from the volatile compounds (col 2, ln 9-28, col 7, ln 60 – col 8, ln 20, Example 1; A tobacco blend including a first and second tobacco material is heated to an elevated temperature to extract volatile compounds. The extracted volatile compounds are collected in order to form an extract of flavorful substances),
wherein the first extraction temperature and the second extraction temperature are selected from within a range of 100 degrees Celsius to 160 degrees Celsius (col 2, ln 9-28, col 6, ln 42-48; A tobacco blend including a first and second starting tobacco material is heated to a temperature between 250° F to 350° F extract volatile compounds. The range is equal to 121° C to 177° C),
but does not teach the method i) wherein the blended tobacco extract is a liquid blended tobacco extract, the method comprising after the collecting of the volatile compounds, combining the collected volatile compounds released from the first and the second tobacco starting materials in a ratio to form the blended liquid tobacco extract from the combined volatile compounds; ii) wherein the second extraction temperature T2 is at least 10 degrees Celsius lower than the first extraction temperature T1, and iii) the ratio being selected at least in part to reduce a 2- furanmethanol content and increase a nicotine content in the blending liquid tobacco extract.
With respect to i), Buehler, directed to tobacco extraction (pg 1, ln 1-3), teaches a method of producing a blended liquid tobacco extract (pg 1, ln 19-24; The invention relates to a process to obtain tobacco flavor extracts, the process comprising: conditioning a tobacco mixture by heating the mixture to an elevated temperature; recovering emissions produced by the mixture conditioning; and obtaining at least one flavor extract from the recovered emissions; and pg 8, ln 4-6; the step of obtaining at least one flavor extract from the recovered emissions comprises condensing the emissions to obtain at least one condensed emission (liquid) as said at least one flavor extract; and pg 4, ln 26 – pg 5, ln 7; The process can be conducted wherein individual types of tobacco (Burley, Flue-Cured, Oriental) may be treated separately, and the extracts produced from each tobacco type may be blended to obtain a desired flavor), the method comprising the steps of:
preparing a first and second tobacco starting material (pg 1, ln 19-24; The invention relates to a process to obtain tobacco flavor extracts, the process comprising: conditioning a tobacco mixture by heating the mixture to an elevated temperature; and pg 4, ln 26 – pg 5, ln 7; The process can be conducted wherein individual types of tobacco (Burley, Flue-Cured, Oriental) may be treated separately, and the extracts produced from each tobacco type may be blended to obtain a desired flavor. A first and second individual type of tobacco must be obtained and prepared for the conditioning step),
heating the first tobacco starting material at a first extraction temperature T1 (pg 1, ln 19-24; The process comprises: conditioning a tobacco mixture by heating the mixture to a temperature between about 30 degrees Celsius and about 90 degrees Celsius. It is reasonably understood that the both tobacco starting materials are heated to a temperature within this range);
heating the second tobacco starting material at a second extraction temperature T2 (pg 1, ln 19-24; The process comprises: conditioning a tobacco mixture by heating the mixture to a temperature between about 30 degrees Celsius and about 90 degrees Celsius. It is reasonably understood that the both tobacco starting materials are heated to a temperature within this range);
collecting volatile compounds released from the first and the second tobacco starting materials during heating (pg 1, ln 19-24; The invention relates to a process to obtain tobacco flavor extracts, the process comprising: conditioning a tobacco mixture by heating the mixture to an elevated temperature; recovering emissions produced by the mixture conditioning; and obtaining at least one flavor extract from the recovered emissions; and pg 8, ln 4-6; the step of obtaining at least one flavor extract from the recovered emissions comprises condensing the emissions to obtain at least one condensed emission (liquid) as said at least one flavor extract); and
after the collecting of the volatile compounds, combining the collected volatile compounds released from the first and the second tobacco starting materials in a ratio to form the blended liquid tobacco extract from the combined volatile compounds (pg 1, ln 19-24; The invention relates to a process to obtain tobacco flavor extracts, the process comprising: conditioning a tobacco mixture by heating the mixture to an elevated temperature; recovering emissions produced by the mixture conditioning; and obtaining at least one flavor extract from the recovered emissions; and pg 4, ln 26 – pg 5, ln 7; The process can be conducted wherein individual types of tobacco (Burley, Flue-Cured, Oriental) may be treated separately, and the extracts produced from each tobacco type may be blended to obtain a desired flavor. The step of mixing the different extracts (volatile compounds) from different tobacco types must necessarily involve combining the extracts in a ratio to form the blended liquid tobacco extract from the combined volatile compounds).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to collect the volatile compounds using the condensation method taught by Buehler such that the method forms a liquid blended tobacco extract because Coleman and Buehler are directed to tobacco extraction, Buehler demonstrates that condensation is a preferred method of converting a gaseous volatile mixture to a liquid flavor extract which can be added to a conventional cigarette or e-cigarette (Buehler, pg 8, ln 4-15, pg 1, ln 1-14), and this involves combining steps from prior art methods to yield predictable results.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the extract taught by Coleman using the parallel extraction method taught by Buehler to form a blended liquid tobacco extract because Coleman and Buehler are directed to tobacco extraction, Buehler demonstrates that blending volatiles from individually heated tobaccos may allow a very fine control on the final flavor of the extract (Buehler, pg 4, ln 26 – pg 5, ln 7; and pg 7, ln 22-27), and the teaching in Buehler would have led one of ordinary skill to modify Coleman to arrive at the claimed invention.
Coleman in view of Buehler does not teach the method ii) wherein the second extraction temperature T2 is at least 10 degrees Celsius lower than the first extraction temperature T1, and iii) the ratio being selected at least in part to reduce a 2-furanmethanol content and increase a nicotine content in the blending liquid tobacco extract.
With respect to ii), White-802, directed to tobacco extraction (col 2, ln 5-17; A process for toasting tobacco to release (extract) volatiles), teaches a method of producing a blended liquid tobacco extract (col 2, ln 5-63; col 5, ln 39-68; col 6, ln 3-17; Figs. 2B and 3B; Individual tobaccos are separately toasted to release (extract) volatiles as gases. The volatiles are blended and fractionated to form a tobacco extract. Fractionation can be performed via condensation or liquid-liquid separation, both of which result in a liquid tobacco extract), the method comprising the steps of:
preparing a first and second tobacco starting material (col 4, ln 10-13; col 5, ln 39-45; col 6, ln 3-17; Figs. 2B and 3B; A first tobacco starting material is placed into a container (the tobacco in the container farthest to the left in Fig. 3B). A second tobacco starting material is placed into a container (the tobacco in the middle container in Fig. 3B). The method uses three individual tobaccos which may be selected from Burley, Flue Cured, Turkish, and/or various blends thereof);
heating the first tobacco starting material at a first extraction temperature T1 (col 5, ln 39-45; col 6, ln 3-17; Figs. 2B and 3B; The tobacco in the container farthest to the left in Fig. 3B is heated to 475° C (T1));
heating the second tobacco starting material at a second extraction temperature T2 (col 5, ln 39-45; col 6, ln 3-17; Figs. 2B and 3B; The tobacco in the middle container in Fig. 3B is heated to 400° C (T2)),
wherein the second extraction temperature T2 is at least 10 degrees Celsius lower than the first extraction temperature T1 (col 6, ln 3-17; Figs. 2B and 3B; 400° C (T2) is lower than 475° C (T1));
collecting volatile compounds released from the first and the second tobacco starting materials during heating (col 5, ln 39-68; col 6, ln 3-17; Figs. 2B and 3B; The volatile compounds released from the first and second tobacco starting materials during heating are collected and combined prior to fractionation); and
combining the collected volatile compounds released from the first and the second tobacco starting materials in a ratio to form the blended liquid tobacco extract from the combined volatile compounds (col 5, ln 39-68; col 6, ln 3-17; Figs. 2B and 3B; The volatile compounds released from the first and second tobacco starting materials during heating are collected and combined prior to fractionation. Fractionation yields the blended liquid tobacco extract. The step of mixing the different volatile compounds from the first and second tobacco starting materials must necessarily involve combining the extracts in a ratio to form the blended liquid tobacco extract from the combined volatile compounds).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare the extract taught by Coleman in view of Buehler wherein the second extraction temperature T2 is at least 10 degrees Celsius lower than the first extraction temperature T1 as taught by White-802 because Coleman, Buehler, and White-802 are directed to tobacco extraction methods, Coleman provides a range of extraction temperature suitable for the method (Coleman, col 2, ln 9-28, col 6, ln 42-48; A tobacco blend including a first and second starting tobacco material is heated to a temperature between 250° F to 350° F extract volatile compounds. The range is equal to 121° C to 177° C), and White-802 demonstrates that flavor substances different from those obtained in previous methods may be obtained by blending volatiles from individual tobaccos heated at different temperatures (White-802, col 6, ln 12-17).
Coleman in view of Buehler and White-802 does not teach the method iii) the ratio being selected at least in part to reduce a 2-furanmethanol content and increase a nicotine content in the blended liquid tobacco extract.
With respect to iii), it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to adjust a ratio of the collected volatiles from the first tobacco material and the second tobacco material to reduce a 2-furanmethanol content and increase a nicotine content in the blended liquid tobacco extract because 2-furanmethanol and nicotine are volatile compounds which can be released from tobacco (White-841, col 8, ln 31-67, Table 1, Row 17 (2-furanmethanol); and col 10, ln 22-44, Table 3, Row 27 (nicotine/solanone)), the amount of 2-furanmethanol which can be extracted varies based on the identity of the tobacco material (White-841, col 3, ln 31-46, col 7, ln 40 – col 8, ln 67, Table 1, Row 17 (2-furanmethanol); Treated tobacco suspensions extracted from cigarette dust, Burley tobacco dust, flue-cured tobacco dust, and Turkish tobacco dust under the same conditions. The amount of 2-furanmethanol is different for all of the tobacco types), the amount of nicotine which can be extracted varies based on the identity of the tobacco material (Reich, [0049]; Burley tobacco has a nicotine content (N1) of less than 3.5-5%, and Bright tobacco has a nicotine content (N2) of 2.5-3% and the release of specific volatile compounds from a tobacco material can be modified by the extraction temperature at which the tobacco material is heated (Karles, [0057]). In light of the aforementioned properties, the volatile compounds released from the first and the second tobacco starting materials would have different values for the content of 2-furanmethanol and nicotine because on the extraction temperature and the identity of the tobacco starting materials. Therefore, it would have been obvious to one of ordinary skill in the art to reduce a 2-furanmethanol content and increase a nicotine content in the blended liquid tobacco extract by adjusting the ratio of the collected volatiles from the first tobacco material and the second tobacco material.
The ranges for the first and second extraction temperatures disclosed by Coleman overlap the claimed ranges of 100 degrees Celsius to 160 degrees, and therefore the claimed ranges are considered prima facie obvious.
Regarding Claim 23, Coleman in view of Buehler and White-802 teaches the method according to claim 19. White-802 further teaches the method wherein the first extraction temperature is up to 75 degrees Celsius higher than the second extraction temperature (col 5, ln 39-45; col 6, ln 3-17; Figs. 2B and 3B; The tobacco in the container farthest to the left in Fig. 3B is heated to 475° C (T1). The tobacco in the middle container in Fig. 3B is heated to 400° C (T2). (475° C - 400° C) = 75° C). Coleman further teaches the method wherein the extraction temperature is selected from within a range of 100 degrees Celsius to 160 degrees Celsius ([0068], The heating temperature of the tobacco raw material is in a range from 80° C. or more to less than 150° C). Therefore, the maximum temperature difference between the first extraction temperature and the second extraction temperature while still reading on the claim 19 is 50° C (e.g. T1=100° C, T2=150° C). The minimum temperature difference between the first extraction temperature and the second extraction temperature while still reading on the claim 19 is 10° C.
Coleman further teaches the method wherein the second reducing sugar content is up to 20 percent greater than the first reducing sugar content (col 4, ln 45-53; The first tobacco starting material may be Burley tobacco. The second tobacco starting material may be flue-cured tobacco (also known as Bright tobacco). Burley tobacco has a reducing sugar content (S1) of less than 5 percent (see Klipfel, [0029] and Banyasz, col 6, ln 64-65), and Bright tobacco has a reducing sugar content (S2) of between about 2.5 percent and about 20 percent (see Klipfel, [0028]). The percent difference between the first and the second reducing sugar contents is at most 20 percent). 50° C corresponds to at least 1 degree Celsius per 1 percent difference between the first and the second reducing sugar contents (S2-S1). Therefore, there must be embodiments which satisfy the claim limitation regardless of the exact reducing sugar content of the two tobacco starting materials.
Regarding Claim 24, Coleman in view of Buehler and White-802 teaches the method according to claim 19. White-802 further teaches the method wherein the first extraction temperature is up to 75 degrees Celsius higher than the second extraction temperature (col 5, ln 39-45; col 6, ln 3-17; Figs. 2B and 3B; The tobacco in the container farthest to the left in Fig. 3B is heated to 475° C (T1). The tobacco in the middle container in Fig. 3B is heated to 400° C (T2). (475° C - 400° C) = 75° C). Coleman further teaches the method wherein the extraction temperature is selected from within a range of 100 degrees Celsius to 160 degrees Celsius ([0068], The heating temperature of the tobacco raw material is in a range from 80° C. or more to less than 150° C). Therefore, the maximum temperature difference between the first extraction temperature and the second extraction temperature while still reading on the claim 19 is 50° C (e.g. T1=100° C, T2=150° C). The percentage difference between the first and the second extraction temperatures is (T1-T2)/(T2) x 100 = (150° C - 100° C)/(100° C) = 50%). The minimum temperature difference between the first extraction temperature and the second extraction temperature while still reading on the claim 19 is 10° C.
Coleman further teaches the method wherein the second reducing sugar content is up to 20 percent greater than the first reducing sugar content (col 4, ln 45-53; The first tobacco starting material may be Burley tobacco. The second tobacco starting material may be flue-cured tobacco (also known as Bright tobacco). Burley tobacco has a reducing sugar content (S1) of less than 5 percent (see Klipfel, [0029] and Banyasz, col 6, ln 64-65), and Bright tobacco has a reducing sugar content (S2) of between about 2.5 percent and about 20 percent (see Klipfel, [0028]). The percent difference between the first and the second reducing sugar contents is at most 20 percent). 50% is at least 0.5 times the percentage difference between the first and the second reducing sugar contents (20%) when (S2-S1) is less than 100%. Therefore, there must be embodiments which satisfy the claim limitation regardless of the exact reducing sugar content of the two tobacco starting materials.
Regarding Claim 25, Coleman in view of Buehler and White-802 teaches the method according to claim 19. White-802 further teaches the method wherein the first extraction temperature is at least 10 degrees Celsius higher than the second extraction temperature (col 5, ln 39-45; col 6, ln 3-17; Figs. 2B and 3B; The tobacco in the container farthest to the left in Fig. 3B is heated to 475° C (T1). The tobacco in the middle container in Fig. 3B is heated to 400° C (T2). (475° C - 400° C) = 75° C). Buehler further teaches the method wherein the second reducing sugar content is at least 10 percent greater than the first reducing sugar content (pg 5, ln 4-7; As applied to claim 19 above, Coleman has been modified in view of Buehler wherein the first tobacco starting material is Burley tobacco and the second tobacco starting material is Bright tobacco. Because Burley tobacco has a reducing sugar content (S1) of less than 5 percent (see Klipfel, [0029] and Banyasz, col 6, ln 64-65), and Bright tobacco has a reducing sugar content (S2) of between about 2.5 percent and about 20 percent (see Klipfel, [0028]), it is reasonably understood that Coleman in view of Buehler and White-802 would have embodiments wherein the second reducing sugar content is at least 10 percent greater than the first reducing sugar content).
Regarding Claim 26, Coleman in view of Buehler and White-802 teaches the method according to Claim 19. Coleman further teaches the method wherein the second nicotine content N2 is lower than the first nicotine content N1 (col 4, ln 45-53; The first tobacco starting material may be Burley tobacco. The second tobacco starting material may be flue-cured tobacco (also known as Bright tobacco). Because Burley tobacco has a nicotine content (N1) of less than 3.5-5% (see Reich, [0049]), and Bright tobacco has a nicotine content (N2) of 2.5-3% (see Reich, [0049]), one of ordinary skill would reasonably expect the second nicotine content N2 to be lower than the first nicotine content N1 as claimed).
Regarding Claim 27, Coleman in view of Buehler and White-802 teaches the method according to claim 19. White-802 further teaches the method wherein the first extraction temperature is up to 75 degrees Celsius higher than the second extraction temperature (col 5, ln 39-45; col 6, ln 3-17; Figs. 2B and 3B; The tobacco in the container farthest to the left in Fig. 3B is heated to 475° C (T1). The tobacco in the middle container in Fig. 3B is heated to 400° C (T2). (475° C - 400° C) = 75° C). Coleman further teaches the method wherein the extraction temperature is selected from within a range of 100 degrees Celsius to 160 degrees Celsius ([0068], The heating temperature of the tobacco raw material is in a range from 80° C. or more to less than 150° C). Therefore, the maximum temperature difference between the first extraction temperature and the second extraction temperature while still reading on the claim 19 is 50° C (e.g. T1=100° C, T2=150° C). The minimum temperature difference between the first extraction temperature and the second extraction temperature while still reading on the claim 19 is 10° C.
Coleman further teaches the method wherein the first nicotine content is between 0.5 and 2.5% percent greater than the second nicotine content (col 4, ln 45-53; The first tobacco starting material may be Burley tobacco. The second tobacco starting material may be flue-cured tobacco (also known as Bright tobacco). Because Burley tobacco has a nicotine content (N1) of less than 3.5-5% (see Reich, [0049]), and Bright tobacco has a nicotine content (N2) of 2.5-3% (see Reich, [0049]). Therefore, the difference between the first and the second extraction temperatures (T1-T2) (10 to 50° C) corresponds to at least 0.5 degrees Celsius per 1 percent difference between the second and the first nicotine contents (N1-N2) (0.5 and 2.5%) regardless of the exact nicotine contents of the first and second tobacco starting materials.
Regarding Claim 28, Coleman in view of Buehler and White-802 does not teach the method wherein each extraction temperature is selected such that the collected volatile compounds from the corresponding tobacco starting material contains no more than 0.8 milligrams of 2-furanmethanol per gram of tobacco starting material.
The extraction temperatures would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the release of specific volatile compounds from a tobacco material is a variable which can be modified by the extraction temperature at which the tobacco material is heated (Karles, [0057]). As such, without showing unexpected results, the claimed extraction temperatures cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the extraction temperatures by routine experimentation to obtain the desired amount of milligrams of 2-furanmethanol per gram of tobacco starting material, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. (see MPEP § 2144.05, II.).
Regarding Claim 29, Coleman in view of Buehler and White-802 does not teach the method wherein the first and the second extraction temperatures are selected to provide a liquid tobacco extract having a nicotine content of at least 0.02 percent by weight based on the dry weight of the liquid tobacco extract.
The extraction temperatures would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the release of specific volatile compounds from a tobacco material is a variable which can be modified by the extraction temperature at which the tobacco material is heated (Karles, [0057]). Therefore, the nicotine content of a liquid tobacco extract formed from said volatiles can be modified by the extraction temperature at which the tobacco material is heated. As such, without showing unexpected results, the claimed extraction temperatures cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the extraction temperatures by routine experimentation to obtain the desired nicotine content of liquid tobacco extract, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. (see MPEP § 2144.05, II.).
Regarding Claim 30, Coleman in view of Buehler and White-802 does not teach the method wherein the first and the second extraction temperatures are selected to provide a ratio by weight of (β-ionone + β-damascenone) to (phenol) of at least about 0.25.
The extraction temperatures would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the release of specific volatile compounds from a tobacco material is a variable which can be modified by the extraction temperature at which the tobacco material is heated (Karles, [0057]). Therefore, the amount of (β-ionone + β-damascenone) and phenol, and their ratio by weight in the liquid tobacco extract formed from said volatiles can be modified by the extraction temperature at which the tobacco material is heated. As such, without showing unexpected results, the claimed extraction temperatures cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the extraction temperatures by routine experimentation to obtain the desired weight ratio of (β-ionone + β-damascenone) to (phenol), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. (see MPEP § 2144.05, II.).
Regarding Claim 31, Coleman in view of Buehler and White-802 does not teach the method wherein the first and the second extraction temperatures are selected to provide a ratio by weight of (furaneol + (2,3-diethyl-5-methylpyrazine)*100) to (nicotine) of at least about 5 x 10-4.
The extraction temperatures would have been considered a result effective variable by one of ordinary skill in the art before the effective filing date of the invention because the release of specific volatile compounds from a tobacco material is a variable which can be modified by the extraction temperature at which the tobacco material is heated (Karles, [0057]). Therefore, the amount of (furaneol + (2,3-diethyl-5-methylpyrazine)*100) and nicotine, and their ratio by weight in the liquid tobacco extract formed from said volatiles can be modified by the extraction temperature at which the tobacco material is heated. As such, without showing unexpected results, the claimed extraction temperatures cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of the invention would have optimized the extraction temperatures by routine experimentation to obtain the desired weight ratio of (furaneol + (2,3-diethyl-5-methylpyrazine)*100) to (nicotine), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. (see MPEP § 2144.05, II.).
Regarding Claims 29-31, the Examiner notes that the claims are directed to selecting temperatures based on an intended result. As discussed above, extraction temperature is a result effective variable that can be optimized to obtain a desired extraction of certain products. Therefore, it is obvious that the extraction temperatures can be selected based on one or more of the desired products to be extracted or not extracted from the starting material and would only take routine skill in the art.
Regarding Claim 32, Coleman in view of Buehler and White-802 teaches the method according to claim 19. Coleman further teaches the method wherein the first tobacco starting material is Burley tobacco and the second tobacco starting material is Bright tobacco (col 4, ln 45-53; The first tobacco starting material may be Burley tobacco. The second tobacco starting material may be flue-cured tobacco (also known as Bright tobacco).
Regarding Claim 33, Coleman in view of Buehler and White-802 does not teach the method wherein the step of combining the collected volatile compounds from the first and second tobacco materials comprises determining a target range for a content of 2-furanmethanol in the liquid tobacco extract and adjusting a ratio of the collected volatiles from the first tobacco material and the second tobacco material to provide the blended liquid tobacco extract with a 2-furanmethanol content within the target range.
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to determine a target range for a content of 2-furanmethanol in the liquid tobacco extract and adjust a ratio of the collected volatiles from the first tobacco material and the second tobacco material to provide the blended liquid tobacco extract with a 2-furanmethanol content within the target range because 2-furanmethanol is a volatile compound which can be released from tobacco (White-841, col 8, ln 31-67, Table 1, Row 17 (2-furanmethanol)), the amount of 2-furanmethanol which can be extracted varies based on the identity of the tobacco material (White-841, col 3, ln 31-46, col 7, ln 40 – col 8, ln 67, Table 1, Row 17 (2-furanmethanol); Treated tobacco suspensions extracted from cigarette dust, Burley tobacco dust, flue-cured tobacco dust, and Turkish tobacco dust under the same conditions. The amount of 2-furanmethanol is different for all of the tobacco types), and the release of specific volatile compounds from a tobacco material can be modified by the extraction temperature at which the tobacco material is heated (Karles, [0057]). In light of the aforementioned properties, it would have been obvious to one of ordinary skill in the art to optimize the 2-furanmethanol content to a target value by adjusting the ratio of the collected volatiles from the first tobacco material and the second tobacco material.
Regarding Claim 35, Coleman in view of Buehler and White-802 teaches the method according to claim 19. Coleman further teaches the method wherein each of the first and the second tobacco starting materials is heated in a flow of inert gas (col 6, ln 55-59, col 8, ln 7-14, Example 1).
Regarding Claim 36, Coleman teaches a blended liquid tobacco extract produced by the method according to claim 19 (col 2, ln 9-28; A tobacco blend including a first and second tobacco material is heated to an elevated temperature to extract volatile compounds. The extracted compounds form an extract of flavorful substances comprising a complex mixture of volatile, semi-volatile, and non-volatile aroma/flavor components. Coleman has been modified in view of Buehler and White-802 to read on the limitations of Claim 19).
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Coleman (US 6,298,858 B1, cited on the IDS dated 10/21/2022) in view of Buehler (WO 2017/089576 A1) and White-802 (US 5,038,802 A), and further in view of Fujisawa (US 2016/0360780 A1, cited on the IDS dated 12/22/2022).
Regarding Claim 34, Coleman in view of Buehler and White-802 teaches the method according to claim 19, but does not teach the method wherein each of the first and the second tobacco starting materials is heated at the corresponding extraction temperature for at least 90 minutes
Fujisawa, directed to tobacco extraction ([0009]), teaches a method of producing a liquid tobacco extract ([0033], The extraction method comprises a step A for heating a tobacco raw material; and a step B for bringing a release component released in the gas phase in the step A into contact with a collection solvent; and [0049], The collection solvent may be a liquid such as glycerin, water or ethanol. The solution of the release component (tobacco volatiles) and the collection solvent is the liquid tobacco extract), the method comprising the steps of:
preparing a first tobacco starting material ([0060]-[0062], Fig. 4 shows the extraction method according to a first embodiment. At step S10, tobacco raw material 50 is subjected to an alkali treatment),
wherein the first tobacco starting material has not been subjected to a prior extraction ([0033], [0060]-[0062], Fig. 4; It is reasonably understood that a tobacco raw material has not been subjected to a prior extraction);
heating the first tobacco starting material at a first extraction temperature T1 ([0033], [0060]-[0062], [0067]-[0068], Fig. 4; The tobacco raw material 50 which has been subjected to an alkali treatment is heated in Step S20. The heating temperature of the tobacco raw material is in a range from 80° C. or more to less than 150° C);
collecting volatile compounds released from the first tobacco starting materials during heating ([0072], Fig. 4; In Step S30, a release component (volatile compounds) which is released in the gas phase in Step S20 is brought into contact with the collection solvent 70 at normal temperature); and
forming the liquid tobacco extract from the volatile compounds ([0033], and [0049], [0060]-[0072], Fig. 4; The collection solvent may be a liquid such as glycerin, water or ethanol. The solution of the release component (tobacco volatiles) and the collection solvent resulting from the collection step S30 is the liquid tobacco extract),
wherein the first extraction temperature is selected from within a range of 100 degrees Celsius to 160 degrees Celsius ([0068], The heating temperature of the tobacco raw material is in a range from 80° C. or more to less than 150° C),
wherein the first tobacco starting material is heated at the first extraction temperature for at least 90 minutes ([0060]-[0061], [0067], [0070]-[0071], Fig. 4; At step S20, the tobacco raw material 50 subjected to a heating treatment. An aeration treatment may simultaneously be performed during the heating treatment, wherein the heating is performed under the flow of a gas for less than 300 minutes. [0118]-[0129] show an experiment wherein 500g of tobacco raw material is heated to 120 degrees Celsius for 300 minutes, It is reasonably understood that each of the first and the second tobacco starting materials is heated at the corresponding extraction temperature for the same duration).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to heat each of the first and second tobacco starting materials to their corresponding extraction temperatures for at least 90 minutes as taught by Fujisawa because Coleman and Fujisawa are directed to tobacco extraction, Fujisawa demonstrates that at about 300 minutes, the rate at which a nicotine component is volatilized from the tobacco raw material declines, and after about 120 minutes, the amount of NNN, NAT, and NAB in the collected extract gradually increases (Fujisawa, [0129]-[0130]), and this involves combining steps from prior art methods to yield predictable results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/J.M.M./
Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755