DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/5/2025 has been entered.
Status of the Claims
Claims 1 and 3-21 are pending. Claims 9-15 are withdrawn. Claim 1 has been amended. Claims 17-21 are new.
Response to Arguments
Applicant's arguments filed 12/5/2025 have been fully considered but they are not persuasive.
Applicant argues that the details shown in Applicant’s Table 1 demonstrate unexpected results. This argument is not persuasive as the baked item of claim 1 uses an inorganic non-metal microwave absorbing agent comprising coke, carbon powder, or a combination thereof while Table 1 does not have any mention of coke and, instead, uses SiC. SiC is not the same material as coke. As such, the alleged unexpected results are not commensurate in scope with the claimed invention (MPEP § 716.02(d)).
Applicant further argues that “silicon carbide comprising coke, carbon powder, or a combination thereof . . . significantly outperform ferrite by producing an enhanced rate at which the temperature of the baked item rises. See, for example, Table 1 of the present Application.” (Remarks, page 7). This argument is not persuasive as Applicant’s Table 1 indicates that the allegedly significant outperformance over ferrite (i.e., Fe3O4 powder) is dependent upon the particle size and the ratio of the absorbing agent. Specifically, Applicant’s Table 1 shows that 5 µm SiC at a 10% ratio heats worse than 25 µm ferrite at a 30% ratio. Because Applicant’s claims encompass the particle size and ratio of this inferior susceptor material, Applicant’s allegation of unexpected benefits is not persuasive, as unexpected results must be commensurate in scope with the claimed invention (MPEP § 716.02(d)).
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.
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, 4-6, and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 2017/0079325 A1) in view of Rojo-Calderon et al. (US 2018/0295885 A1), as evidenced by Honeycutt et al. (US 5,873,372).
Regarding claim 1, Mironov discloses a baked item (“tobacco stick” comprising “tobacco product” and “filter”, ¶ 0035, with the “tobacco product” further comprising “tobacco material, fibers, . . . and the susceptor in the form of the plurality of particles”, ¶ 0005), comprising:
a tobacco (“tobacco material, fibers”, ¶ 0005), comprising lignocellulose1; and
a microwave absorbing agent (“the susceptor in the form of the plurality of particles”, ¶ 0005), and
wherein the microwave absorbing agent has a particle size ranging from 15 µm to 200 µm (“the susceptor particles have sizes in a range of about 5 micrometer to about 100 micrometer”, ¶ 0024). Since the range 5 µm to 100 µm overlaps the claimed range of 15 µm to 200 µm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
However, Mironov does not disclose that the microwave absorbing agent is an inorganic non-metal comprising coke, carbon powder, or a combination thereof. Instead, Mironov discloses that the microwave absorbing agent is a ferrite absorbing agent (“ferrite”, ¶ 0029).
Rojo-Calderon, in the same field of endeavor, teaches that microwave absorbing agents can comprise a metal or carbon (“Preferred susceptors comprise a metal or carbon.”, ¶ 0050). Specifically, Rojo-Calderon teaches that graphite is an alternative to ferrite (“A preferred susceptor may comprise or consist of . . . ferrite.” ¶ 0050; “susceptor materials may also comprise or be made of graphite”, ¶ 0051). Because Rojo-Calderon teaches this interchangeability, one of ordinary skill in the art would have understood that substitution of graphite in place of ferrite would predictably provide the same result of facilitating heating of the baked item. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the graphite powder, which is a carbon powder as graphite is made of carbon, taught by Rojo-Calderon in place of the ferrite particles taught by Mironov (see MPEP § 2143(I)(B)).
While Mironov, in view of Rojo-Calderon, does not explicitly disclose “wherein the tobacco and the microwave absorbing agent are configured to absorb microwaves to generate heat, wherein the microwave absorbing agent comprises a non-volatile solid material with a stable dielectric loss constant, wherein the dielectric loss constant of the microwave absorbing agent remains constant with temperature, wherein the dielectric loss constant of the microwave absorbing agent is higher than a dielectric loss constant of the lignocellulose in the tobacco, wherein the microwave absorbing agent is configured to stably absorb microwaves to generate heat to heat the tobacco through thermal conduction”, Mironov, in view of Rojo-Calderon, teaches the same composition of tobacco and inorganic non-metal microwave absorbing agent as the claimed invention (“tobacco material, fibers” in ¶ 0005 of Mironov corresponds to tobacco comprising lignocellulose in applicant’s claim 1; “graphite” in ¶ 0051 of Rojo-Calderon corresponds to the carbon inorganic non-metal microwave absorbing agent in applicant’s claim 16). Therefore, given that the baked item taught by Mironov, in view of Rojo-Calderon, is the same as the claimed baked item, the properties related to the dielectric loss constants of the tobacco and microwave absorbing agent of the baked item are expected to inherently be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Regarding claim 4, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Mironov further discloses wherein the microwave absorbing agent is uniformly distributed in the tobacco (“homogenous distribution in a tobacco sheet”, ¶ 0024).
Regarding claim 5, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Mironov does not explicitly disclose wherein a ratio of a volume of the microwave absorbing agent to a volume of the tobacco ranges from 1% to 30%. However, Mironov teaches that the amount of microwave absorbing agent relative to the tobacco product affects the heat distribution over the tobacco product (¶ 0026). The efficacy of the microwave absorbing agent for this result depends on the ratio of the volume of the microwave absorbing agent to the volume of the tobacco. If the relative volume of the microwave absorbing agent is too low, it will provide insufficient heat to heat the tobacco. If the relative volume of the microwave absorbing agent is too high, it will overheat the tobacco. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the ratio of the volume of the microwave absorbing agent to the volume of the tobacco such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 6, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Mironov further discloses wherein the thermal conductivity of the microwave absorbing agent is high (¶ 0027). While Mironov, in view of Rojo-Calderon, does not explicitly disclose “wherein a thermal conductivity of the microwave absorbing agent is higher than a thermal conductivity of the tobacco”, Mironov, in view of Rojo-Calderon, teaches the same composition of tobacco and inorganic non-metal microwave absorbing agent as the claimed invention (“tobacco material, fibers” in ¶ 0005 of Mironov corresponds to tobacco comprising lignocellulose in applicant’s claim 1; “graphite” in ¶ 0051 of Rojo-Calderon corresponds to the carbon inorganic non-metal microwave absorbing agent in applicant’s claim 16). Therefore, given that the baked item taught by Mironov, in view of Rojo-Calderon, is the same as the claimed baked item, the relative relationship between the thermal conductivity of the tobacco and microwave absorbing agent of the baked item is expected to inherently be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Regarding claim 16, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Rojo-Calderon further teaches wherein the inorganic non-metal comprises carbon powder (“graphite”, ¶ 0051).
Regarding claim 17, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Mironov teaches wherein the microwave absorbing agent has a particle size ranging from 15 µm to 50 µm (“the susceptor particles have sizes in a range of about 5 micrometer to about 100 micrometer”, ¶ 0024). Since the range 5 µm to 100 µm overlaps the claimed range of 15 µm to 50 µm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 18, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Mironov teaches wherein the microwave absorbing agent has a particle size ranging from 15 µm to 25 µm (“the susceptor particles have sizes in a range of about 5 micrometer to about 100 micrometer”, ¶ 0024). Since the range 5 µm to 100 µm overlaps the claimed range of 15 µm to 25 µm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
Regarding claim 19, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Mironov does not explicitly disclose wherein a ratio of a volume of the microwave absorbing agent to a volume of the tobacco ranges from 20% to 30%. However, Mironov teaches that the amount of microwave absorbing agent relative to the tobacco product affects the heat distribution over the tobacco product (¶ 0026). The efficacy of the microwave absorbing agent for this result depends on the ratio of the volume of the microwave absorbing agent to the volume of the tobacco. If the relative volume of the microwave absorbing agent is too low, it will provide insufficient heat to heat the tobacco. If the relative volume of the microwave absorbing agent is too high, it will overheat the tobacco. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the ratio of the volume of the microwave absorbing agent to the volume of the tobacco such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 20, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 17, as stated above. Mironov does not explicitly disclose wherein a ratio of a volume of the microwave absorbing agent to a volume of the tobacco ranges from 20% to 30%. However, Mironov teaches that the amount of microwave absorbing agent relative to the tobacco product affects the heat distribution over the tobacco product (¶ 0026). The efficacy of the microwave absorbing agent for this result depends on the ratio of the volume of the microwave absorbing agent to the volume of the tobacco. If the relative volume of the microwave absorbing agent is too low, it will provide insufficient heat to heat the tobacco. If the relative volume of the microwave absorbing agent is too high, it will overheat the tobacco. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the ratio of the volume of the microwave absorbing agent to the volume of the tobacco such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Regarding claim 21, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 18, as stated above. Mironov does not explicitly disclose wherein a ratio of a volume of the microwave absorbing agent to a volume of the tobacco ranges from 20% to 30%. However, Mironov teaches that the amount of microwave absorbing agent relative to the tobacco product affects the heat distribution over the tobacco product (¶ 0026). The efficacy of the microwave absorbing agent for this result depends on the ratio of the volume of the microwave absorbing agent to the volume of the tobacco. If the relative volume of the microwave absorbing agent is too low, it will provide insufficient heat to heat the tobacco. If the relative volume of the microwave absorbing agent is too high, it will overheat the tobacco. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to optimize the ratio of the volume of the microwave absorbing agent to the volume of the tobacco such that it falls within the claimed range. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." (In re Aller, 105 USPQ 233 (C.C.P.A. 1955); MPEP § 2144.05(II)(A)).
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 2017/0079325 A1) in view of Hwang et al. (US 2008/0087135 A1), as evidenced by Honeycutt et al. (US 5,873,372).
Regarding claim 1, Mironov discloses a baked item (“tobacco stick” comprising “tobacco product” and “filter”, ¶ 0035, with the “tobacco product” further comprising “tobacco material, fibers, . . . and the susceptor in the form of the plurality of particles”, ¶ 0005), comprising:
a tobacco (“tobacco material, fibers”, ¶ 0005), comprising lignocellulose2; and
a microwave absorbing agent (“the susceptor in the form of the plurality of particles”, ¶ 0005), and
wherein the microwave absorbing agent has a particle size ranging from 15 µm to 200 µm (“the susceptor particles have sizes in a range of about 5 micrometer to about 100 micrometer”, ¶ 0024). Since the range 5 µm to 100 µm overlaps the claimed range of 15 µm to 200 µm, a prima facie case of obviousness exists (MPEP § 2144.05(I)).
However, Mironov does not disclose that the microwave absorbing agent is an inorganic non-metal comprising coke, carbon powder, or a combination thereof. Instead, Mironov discloses that the microwave absorbing agent is a ferrite absorbing agent (“ferrite”, ¶ 0029).
Hwang, in the same field of electromagnetic susceptors, teaches that microwave absorbing agents can comprise coke (“carbon layer . . . such as coke . . . becomes the major microwave receptor/susceptor to be heated by microwave”, ¶ 0083). One of ordinary skill in the art would have understood that substitution of a coke susceptor in place of a ferrite susceptor would predictably provide the same result of facilitating heating of the baked item. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the coke powder taught by Hwang in place of the ferrite particles taught by Mironov (see MPEP § 2143(I)(B)).
Although Hwang is in the field of electromagnetic susceptors, it is reasonably pertinent to the particular problem with which Mironov (and the current application) was concerned (i.e., using electromagnetic susceptors for heating). One of ordinary skill in the art would have looked to prior art concerning electromagnetic susceptors because Mironov teaches using electromagnetic susceptors (see MPEP § 2141.01(a)(I)).
While Mironov, in view of Hwang, does not explicitly disclose “wherein the tobacco and the microwave absorbing agent are configured to absorb microwaves to generate heat, wherein the microwave absorbing agent comprises a non-volatile solid material with a stable dielectric loss constant, wherein the dielectric loss constant of the microwave absorbing agent remains constant with temperature, wherein the dielectric loss constant of the microwave absorbing agent is higher than a dielectric loss constant of the lignocellulose in the tobacco, wherein the microwave absorbing agent is configured to stably absorb microwaves to generate heat to heat the tobacco through thermal conduction”, Mironov, in view of Hwang, teaches the same composition of tobacco and inorganic non-metal microwave absorbing agent as the claimed invention (“tobacco material, fibers” in ¶ 0005 of Mironov corresponds to tobacco comprising lignocellulose in applicant’s claim 1; “coke” in ¶ 0083 of Hwang corresponds to the coke inorganic non-metal microwave absorbing agent in applicant’s claim 3). Therefore, given that the baked item taught by Mironov, in view of Hwang, is the same as the claimed baked item, the properties related to the dielectric loss constants of the tobacco and microwave absorbing agent of the baked item are expected to inherently be the same. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP § 2112.01(I)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); MPEP § 2112.01(I)).
Regarding claim 3, Mironov, in view of Hwang, teaches the baked item of claim 1, as stated above. Hwang further teaches wherein the inorganic non-metal comprises coke (“coke”, ¶ 0083).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 2017/0079325 A1) in view of Rojo-Calderon et al. (US 2018/0295885 A1) as applied to claim 1 above, and further in view of Song et al. (CN 103315404 A, a translation of which was previously provided for reference).
Regarding claim 7, Mironov, in view of Rojo-Calderon, teaches the baked item of claim 1, as stated above. Mironov further discloses wherein the baked item comprises a cigarette (“tobacco stick” comprising “tobacco product” and “filter”, ¶ 0035 with the “tobacco product” further comprising “tobacco material, fibers, . . . and the susceptor in the form of the plurality of particles”, ¶ 0005), and the cigarette comprises a tobacco portion (“tobacco product”, ¶ 0035), and a filter portion (“filter”, ¶ 0035), wherein the tobacco portion comprises the tobacco (“tobacco material, fibers”, ¶ 0005) and the microwave absorbing agent (“the susceptor in the form of the plurality of particles”, ¶ 0005).
However, Mironov does not teach that the cigarette comprises a microwave filter membrane, and the microwave filter membrane is disposed in the filter portion or between the filter portion and the tobacco portion.
Song, in the same field of endeavor, teaches a cigarette (combination of “filter 1”, “metal mesh 3”, and “tobacco product” in “ceramic cigarette cup 4”, Fig. 1, ¶ 0010, 0014, 0017) that comprises a microwave filter membrane (“metal mesh 3”, Fig. 1, ¶ 0017), and the microwave filter membrane is disposed between a filter portion (“filter 1”, Fig. 1, ¶ 0017) and a tobacco portion (“tobacco product” in “ceramic cigarette cup 4”, Fig. 1, ¶ 0010, 0014, 0017). Song also teaches a benefit of including a microwave filter membrane between the filter portion and the tobacco portion in that it allows the baked item to be heated in a microwave emitter while preventing microwave penetration when heating the tobacco portion with microwaves (heating with “microwave generator 8”, Fig. 1, ¶ 0017). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the cigarette taught by Mironov to include a microwave filter membrane between the filter portion and the tobacco portion, as taught by Song in order to obtain the benefit of preventing microwave penetration when heating the tobacco portion with microwaves, allowing the baked item to be safely heated by a wider assortment of heating devices.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mironov (US 2017/0079325 A1) in view of Rojo-Calderon et al. (US 2018/0295885 A1) and Song et al. (CN 103315404 A) as applied to claim 7 above, and further in view of Courbat et al. (US 2019/0191783 A1).
Regarding claim 8, Mironov, in view of Rojo-Calderon and Song, teaches the baked item of claim 7, as stated above. Song further teaches wherein the microwave filter membrane is provided with a first through hole (holes in “metal mesh 3”, Fig. 1, ¶ 0017) configured to circulate airflow therefrom (“pass through the airflow”, ¶ 0008), wherein the microwave filter membrane is configured to reflect microwaves to prevent microwave leakage (“prevent microwave penetration”, ¶ 0008), and wherein the first through hole is configured to intercept transmission of the microwaves (¶ 0008).
Song does not teach that the microwave filter membrane comprises a metal foil. Instead, Song teaches using a metal mesh for the microwave filter membrane. However, it is known in the art to use metal foil as an alternative to metal mesh (Courbat teaches using metal foil as an alternative to metal mesh, ¶ 0041). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use metal foil for the microwave filter membrane, as it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960); MPEP § 2144.07).
Conclusion
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/C.G.C./Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
1 Honeycutt et al. (US 5,873,372) teaches that lignocellulose is in the fibers of tobacco stems (Col. 2, Lines 41-42) and that plant cell walls are made of lignocellulose (Col. 4, Lines 10-14); therefore, it was known in the art before the effective filing date of the claimed invention that tobacco plant material and fibers comprise lignocellulose.
2 Honeycutt et al. (US 5,873,372) teaches that lignocellulose is in the fibers of tobacco stems (Col. 2, Lines 41-42) and that plant cell walls are made of lignocellulose (Col. 4, Lines 10-14); therefore, it was known in the art before the effective filing date of the claimed invention that tobacco plant material and fibers comprise lignocellulose.