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 .
This office action is in response to applicant’s request for continued examination filed June 25, 2025. Claims 1-2, 4, 25-32 have been amended. Claims 13 and 16-18 were previously cancelled. Claims 1-5, 7-12, 14-15, and 19-32 are pending and stand rejected.
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 1-5, 8-11, 14-15, 19-21, 24, 26-27, and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over by US 4607646 A (hereinafter LILLY) in view of US 20150027453 A1 (hereinafter TESSMANN) . LILLY was made of record on applicant’s Information Disclosure Statement dated June 14, 2022.
Regarding claim 1, LILLY discloses a treatment process with burley tobacco being heated in the presence of ammonia at moderate temperature (abstract). LILLY discloses securing tobacco starting material within a sealed reactor preventing the ingress or exit of any gas or liquid (Col. 3, lines 1-3). LILLY further discloses heating the tobacco starting material to a temperature of from 60°C to 200°C (Col. 3, lines 7-8) for a period of from 6 hours to 120 hours (Col. 3, lines 8-9). LILLY further teaches allowing the temperature of the treated tobacco material to cool down to room temperature whilst secured within the sealed reactor; and removing treated tobacco material from the sealed reactor (See Example 2, Col. 4, lines 21-25). LILLY further teaches wherein the tobacco starting material has a moisture content of from 5% to 42% (Col. 3, lines 14-18). LILLY discloses that “OV” is a unit indicating the moisture content in the tobacco and that OV is used interchangeably with moisture content and can be consider equivalents (Col. 2, lines 26-36). LILLY teaches that the moisture content proceeding the treatment is from about 3% to as high as 20%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
LILLY does not disclose wherein there is a reduction in the content of ammonia in the treated tobacco material compared to the content in the tobacco starting material,
TESSMANN teaches a method of processing tobacco and its by-products (abstract). TESSMANN teaches that heating and applying pressure will reduce the ammonia content of the product (¶8). TESSMANN teaches that the Maillard reaction is such that the ammonia content of the tobacco is reduced. TESSMANN teaches that high ammonia content can cause lung and throat irritation when the tobacco is smoked (¶3).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide that the process results in a reduction in the content of ammonia in the treated tobacco material compared to the content in the tobacco starting material as taught in TESSMANN. A person of ordinary skill in the art would obviously apply the processing techniques of TESSMANN to the process of LILLY to reduce the ammonia in the final tobacco product. Doing so would decrease the ammonia content that disadvantageously can cause lung and throat irritation when the tobacco is smoked (TESSMANN ¶3).
Regarding the limitations of a process for treating tobacco material to increase the content of stable fructosazines and deoxyfructosazines and producing a treated tobacco material comprising stable fructosazines and stable deoxyfructosazines by reacting one or more reducing sugars with ammonium and/or ammonia in the tobacco starting material to produce the stable fructosazines and deoxyfructosazines as a primary reaction pathway LILLY and TESSMANN teach these limitations. LILLY teaches the same steps of the instant application for removal of compounds naturally found in tobacco (Col. 1, lines 21-28). TESSMANN teaches that during the heating (range of temperatures and pressures) the Maillard reaction is occurring (¶35). During the Maillard reaction or browning reactions flavorful and aromatic compounds are produced from the naturally occurring sugars and ammonium. Due to conservation of matter, if these aromatic compounds are produced from the sugars and ammonium the sugars and ammonium are necessarily reduced because they have been transformed to aromatic compounds including pyrazines (TESSEMAN ¶35). TESSMANN further teaches that during the Maillard reaction the tobacco is treated (by temperature and pressure) to obtain the best sensory attributes for the different tobacco types through reducing the nitrosamines and ammonia (¶43, ¶47). It is inherent that reactions, specifically the Maillard reaction, are occurring within the sealed container of LILLY. Though neither LILLY nor TESSMAN not state “fructosazines and deoxyfructosazines” these components are inherently present in a reaction involving the natural sugars of the tobacco and the naturally occurring ammonia therein. Therefore given that the methods and operating conditions (i.e. temperature, pressure, sealed vessel) of LILLY and TESSEMAN are the same as those disclosed in the instant specification to result in tobacco having the claimed stable fructosazines and deoxyfructosazines of the treated tobacco taught by modified LILLY is expected inherently to be the same. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Regarding claim 2, modified LILLY discloses the process of claim 1 as discussed above. LILLY further teaches wherein the tobacco material is heated to a temperature of from 90° C. to 120° C (Col. 3, lines 7-8).
Regarding claim 3, modified LILLY discloses the process of claim 1 as discussed above. LILLY further teaches wherein the tobacco is heated for a period of from 12 to 72 hours (Col. 3, lines 8-9). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 4, modified LILLY discloses the process of claim 1 as discussed above. LILLY further teaches wherein the cooling of the heated tobacco to room temperature occurs over a period of from at least 1 hour to 72 hours (See Example 2, Col. 4, lines 21-25). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, modified LILLY discloses the process of claim 1 as discussed above. LILLY further discloses wherein the cooling allows volatile compounds to be reabsorbed by the treated tobacco material. LILLY discloses that the treatment is done in a closed vessel so that there will be no loss of volatiles such as nicotine and certain flavor notes (Col. 1, lines 61-67).
Regarding claim 8, modified LILLY discloses the process of claim 1 as discussed above. LILLY further discloses wherein the tobacco starting material comprises cured tobacco (Col. 2, lines 61-65).
Regarding claim 9, modified LILLY discloses the process of claim 8 as discussed above. LILLY further discloses wherein the cured tobacco is one or more selected from the group consisting of flue cured, air cured, dark air cured, dark fire cured and sun cured tobacco (Col. 2, lines 61-65).
Regarding claim 10, modified LILLY discloses the process of claim 1 as discussed above. LILLY further discloses wherein the tobacco starting material is one or more selected from the group consisting of cut rag, thrashed leaf and tobacco stems (Col. 3, lines 45-47). The cut tobacco in example 1 is considered to be cut rag. Example 2 uses baskets containing batches of tobacco as strip. Tobacco cut into strips is notoriously well known to be cut rag tobacco.
Regarding claim 11, modified LILLY discloses the process of claim 1 as discussed above. LILLY further discloses wherein the tobacco starting material is reconstituted tobacco. LILLY discloses that the invention is a method for altering the flavor characteristics of tobacco or reconstituted tobacco (Col. 1, line 55).
Regarding claim 14, modified LILLY discloses the process of claim 1 as discussed above. LILLY further discloses wherein there is a reduction in the content of total sugars in the treated tobacco material compared to the content in the tobacco starting material. LILLY discloses in patented claim 1 in step b states that the NH3 reacts with the sugar, therefore the treatment reduces the sugar content of the tobacco.
Regarding claim 15, modified LILLY discloses the process of claim 1 as discussed above. LILLY further teaches wherein the treated tobacco material has improved organoleptic properties and/or reduced undesirable sensorial attributes (Col. 1, lines 5-10 and Col. 1, lines 64-67).
Regarding claim 19, modified LILLY discloses the process of claim 1 as discussed above. Therefore, LILLY further discloses tobacco material that has been treated according to the process claim 1. This claim is merely a statement of the final product of the process taught by LILLY and disclosed in the cigarettes formed and tested in Example 3. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 20, LILLY discloses the tobacco material of claim 19 as discussed above. Therefore, LILLY further discloses a tobacco industry product comprising the tobacco material of claim 19. This claim is merely a statement of the final product of the process taught by LILLY and disclosed in the cigarettes formed and tested in Example 3. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 21, LILLY discloses the tobacco material of claim 19 as discussed above. Therefore, LILLY further discloses a method of making a tobacco industry product comprising: obtaining the tobacco material of claim 19 and manufacturing said tobacco industry product. This claim is merely a statement of the final product of the process taught by LILLY and disclosed in the cigarettes formed and tested in Example 3.
Regarding claim 24, modified LILLY discloses the process of claim 1, LILLY further discloses wherein the process involves no fermentation or essentially no fermentation. As explained in the rejection of claim 1 above, 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). "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). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In this case, the prior art products are produced by an identical or substantially identical process. Further the disclosure of LILLY makes no mention of fermentation so it is reasonable to believe where the processes are substantially identical and LILLY does not explicitly disclose fermentation, that the process of LILLY does not involve fermentation.
Regarding claim 26, modified LILLY discloses the process of claim 1 as discussed above. LILLY does not disclose the one or more reducing sugars comprises 5-Hydroxy-6-methyl-3-pyridinyl)methyl alpha-D-glucopyranoside, [5- Hydroxy-4-(hydroxymethyl)-6-methyl-3-pyridinylimethyl beta-D-glucopyranoside, 6-(alpha-D- Glucosaminyl)-1D-myo-inositol, 6-0-(4-Aminobutanoyl)-D-glucopyranose, D-Arabinofuranose, Raffinose, Trisaccharide like Raffinose isomer 1, Trisaccharide like Raffinose isomer 2, Trisaccharide like Raffinose isomer 3, sucrose, or a combination thereof. However, for the same reasons discussed in the rejection of claim 1, the enumerated reducing sugars are those naturally occurring in tobacco and would be reduced by the reactions that occur in a sealed vessel at elevated temperatures and pressures.
Regarding claim 27, modified LILLY discloses the process of claim 1 as discussed above. LILLY further discloses the tobacco is selected from Virginia, Burley, Oriental, Comum, Amarelinho and Maryland tobaccos, and blends of any of these types: and/or wherein the tobacco is air cured, dark air cured, dark fire cured, and sun cured tobacco. LILLY discloses the use of bright tobacco which is another name for Virginia tobacco (Col. 1, lines 58-59). This is notoriously well known in the art. Further LILLY discloses the use of cured tobacco (Col. 1, lines 54-67). Given that the claim recites “and/or” prior art reading on either limitation satisfies the metes and bounds of the claim. In this case, LILLY, discloses both options.
Regarding claim 29, modified LILLY discloses the process of claim 1 as discussed above. LILLY further teaches the tobacco is air cured, dark air cured, dark fire cured, and sun cured tobacco (Col. 1, lines 54-67).
Regarding the limitation wherein the method further comprises reacting amino acids with one or more reducing sugars in the tobacco starting material to produce Amadori compounds which degrade to Maillard reaction products, as a secondary reaction pathway, this is rejected for the same reasons discussed in the rejection of claim 1. Where LILLY and TESSMANN teach treating tobacco at temperatures and pressures within the ranges of the instant application to result in the Maillard reaction, the production of amino acids during this reaction is inherent to the process. This is further bolstered by applicant’s own admission that sealing tobacco in a vessel produces these components upon pyrolysis supporting the finding of inherency (See applicant’s specification PG Pub US 20220400734 A1 ¶51).
Regarding claim 30, modified LILLY discloses the process of claim 1 as discussed above. LILLY further teaches wherein the stable fructosazines and deoxyfructosazines produce one or more furans, pyrroles and pyrazines on pyrolysis. This is rejected for the same reasons in the rejection of claim 29.
Regarding claim 31, modified LILLY discloses the process of claim 1 as discussed above. LILLY further teaches wherein the content of stable fructosazines and deoxyfructosazines in the treated tobacco material is increased relative to tobacco material treated in a non-sealed reactor; and wherein the content of stable fructosazines and deoxyfructosazines in the treated tobacco material is increased relative to tobacco material comprising added ammonia. This is rejected for the same reasons in the rejection of claim 29.
Regarding claim 32, LILLY discloses a treatment process with burley tobacco being heated in the presence of ammonia at moderate temperature (abstract). LILLY discloses securing tobacco starting material within a sealed reactor preventing the ingress or exit of any gas or liquid (Col. 3, lines 1-3). LILLY further discloses heating the tobacco material to a temperature of from 60°C to 200°C (Col. 3, lines 7-8) for a period of from 6 hours to 120 hours(Col. 3, lines 8-9). LILLY further teaches an example where the process has a step of allowing the temperature of the tobacco material to cool down to room temperature whilst secured within the sealed reactor; and removing treated tobacco material from the sealed reactor (See Example 2, Col. 4, lines 21-25). LILLY further teaches wherein there is no liquid added to the sealed reactor before or during the process. LILLY teaches a run without the addition of ammonia (Example 2, Col. 4). LILLY teaches that despite no ammonia used there is still a reduction in sugars. Therefore, the process of LILLY can be accomplished without the addition of ammonia to reduce sugars through controlling temperature and pressure only.
LILLY does not disclose wherein there is a reduction in the content of ammonia in the treated tobacco material compared to the content in the tobacco starting material,
TESSMANN teaches a method of processing tobacco and its by-products (abstract). TESSMANN teaches that heating and applying pressure will reduce the ammonia content of the product (¶8). TESSMANN teaches that the Maillard reaction is such that the ammonia content of the tobacco is reduced. TESSMANN teaches that high ammonia content can cause lung and throat irritation when the tobacco is smoked (¶3).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide that the process results in a reduction in the content of ammonia in the treated tobacco material compared to the content in the tobacco starting material as taught in TESSMANN. A person of ordinary skill in the art would obviously apply the processing techniques of TESSMANN to the process of LILLY to reduce the ammonia in the final tobacco product. Doing so would decrease the ammonia content that disadvantageously can cause lung and throat irritation when the tobacco is smoked (TESSMANN ¶3).
Regarding the limitations of a process for treating tobacco material to increase the content of stable fructosazines and deoxyfructosazines and producing a treated tobacco material comprising stable fructosazines and stable deoxyfructosazines by reacting one or more reducing sugars with ammonium and/or ammonia in the tobacco starting material to produce the stable fructosazines and deoxyfructosazines as a primary reaction pathway LILLY and TESSMANN teach these limitations. LILLY teaches the same steps of the instant application for removal of compounds naturally found in tobacco (Col. 1, lines 21-28). TESSMANN teaches that during the heating (range of temperatures and pressures) the Maillard reaction is occurring (¶35). During the Maillard reaction or browning reactions flavorful and aromatic compounds are produced from the naturally occurring sugars and ammonium. Due to conservation of matter, if these aromatic compounds are produced from the sugars and ammonium the sugars and ammonium are necessarily reduced because they have been transformed to aromatic compounds including pyrazines (TESSEMAN ¶35). TESSMANN further teaches that during the Maillard reaction the tobacco is treated (by temperature and pressure) to obtain the best sensory attributes for the different tobacco types through reducing the nitrosamines and ammonia (¶43, ¶47). It is inherent that reactions, specifically the Maillard reaction, are occurring within the sealed container of LILLY. Though neither LILLY nor TESSMAN not state “fructosazines and deoxyfructosazines” these components are inherently present in a reaction involving the natural sugars of the tobacco and the naturally occurring ammonia therein. Therefore given that the methods and operating conditions (i.e. temperature, pressure, sealed vessel) of LILLY and TESSEMAN are the same as those disclosed in the instant specification to result in tobacco having the claimed stable fructosazines and deoxyfructosazines of the treated tobacco taught by modified LILLY is expected inherently to be the same. Recitation of a newly disclosed property does not distinguish over a reference disclosure of the article or composition claims. General Electric v. Jewe Incandescent Lamp Co., 67 USPQ 155. Titanium Metal Corp. v. Banner, 227 USPQ 773. Applicant bears responsibility for proving that reference composition does not possess the characteristics recited in the claims. In re Fitzgerald, 205 USPQ 597, In re Best, 195 USPQ 430.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over LILLY and TESSMANN as applied to claims 1-5, 8-11, 14-15, 19-21, 24, 26-27, and 29-32 above, and evidenced by Philip Morris International.
Regarding claim 7, LILLY teaches the process of claim 1 as discussed above. LILLY further teaches wherein the tobacco starting material comprises one or more selected from the group consisting of green tobacco and dried tobacco. A person of ordinary skill in the art would immediately recognize that flue-cured bright tobacco (Col. 2, lines 62-64) has been dried. Bright tobacco is notoriously well-known to be cured for a time in heated barns (See Philip Morris webpage). “Virginia tobacco is 'flue-cured.' The tobacco leaves are hung in curing barns, where heated air is generated to dry the leaves. As the leaves lose moisture, they develop their distinct aroma, texture, and color.”
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over LILLY and TESSMANN as applied to claim1-5, 8-11, 14-15, 19-21, 24, 26-27, and 29-32 above, and further in view of US 6846177 B1 (hereinafter HUTCHENS).
Regarding claim 12, modified LILLY discloses the process of claim 1 as discussed above. LILLY further does not disclose wherein the tobacco starting material comprises tobacco and one or more additives wherein the one or more additive is selected from the group consisting of: sugars, organic acids (such as lactic acid), humectants, top flavours and casings.
HUTCHENS teaches an apparatus and method for facilitating a tobacco curing process including a plenum (abstract). HUTCHENS teaches that the invention may be used to facilitate the application of treatment materials during curing including aromatics, flavorants, humectants (Col. 4, lines 59-66). HUTCHENS teaches a lower portion of the plenum 12 may form a treatment reservoir 28 (Fig. 2, Col. 8, lines 19-28).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide wherein the tobacco starting material comprises tobacco and one or more additives wherein the one or more additive is selected from the group consisting of: sugars, organic acids (such as lactic acid), humectants, top flavours and casings as taught in HUTCHENS. A person of ordinary skill in the art choosing a cured tobacco to use for the process disclosed in LILLY would obviously choose the cured tobacco product of HUTCHENS with a treatment of aromatics, flavorants, humectants. Doing so would yield a product that has the treated tobacco of HUTCHENS with flavoring (HUTCHENS Col. 4, lines 59-66) and improved smoking qualities (LILLY Col. 1, lines 64-67).
Claims 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over LILLY and TESSMANN as applied to claims 1-5, 8-11, 14-15, 19-21, 24, 26-27, and 29-32 above, and further in view of US 20060157072 A1 (hereinafter ALBINO).
Regarding claim 22, LILLY discloses the tobacco material of claim 19 as discussed above. LILLY does not disclose a tobacco extract manufactured from the tobacco material of claim 19.
ALBINO teaches reduction of the harmful effects of nicotine and methods for production of tobacco products (abstract). ALBINO teaches that the tobaccos contain an amount of exogenous nicotine (¶27). ALBINO teaches that the nicotine extraction is prepared by extraction of conventional tobacco or synthetically prepared nicotine (¶27). ALBINO teaches that extracts can be obtained from tobacco that has undergone treatment processes (¶60, ¶93).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide a tobacco extract manufactured from the tobacco material of claim 19 as taught in ALBINO. A person of ordinary skill in the art would obviously further process the treated tobacco from the process taught in LILLY. Doing so would realize the improved smoke quality advantages of LILLY ((LILLY Col. 1, lines 64-67) and then further create improved extracts for reducing harmful effects of nicotine (ALBINO ¶60 and abstract).
Regarding claim 23, modified LILLY teaches the tobacco extract of claim 22 as discussed above. LILLY does not teach a nicotine-delivery system comprising an extract according to claim 22.
ALBINO teaches reduction of the harmful effects of nicotine and methods for production of tobacco products (abstract). ALBINO teaches that the tobaccos contain an amount of exogenous nicotine (¶27). ALBINO teaches inclusion of reduced nicotine in cigarettes (¶291).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide a nicotine-delivery system comprising an extract according to claim 22 as taught in ALBINO. A person of ordinary skill in the art would obviously provide cigarettes as a nicotine delivery system. Doing so would provide tobacco products with lower nicotine to a smoker (ALBINO ¶291) to reduce the harmful effects of nicotine (abstract).
Regarding claim 24, modified LILLY teaches the tobacco extract of claim 22 as discussed above. LILLY does not disclose a delivery system for delivering tobacco alkaloids other than nicotine, comprising an extract according to claim 22.
ALBINO teaches reduction of the harmful effects of nicotine and methods for production of tobacco products (abstract). ALBINO teaches that the tobaccos contain an amount of exogenous nicotine (¶27). ALBINO teaches an embodiment where oriental tobacco was transformed (¶231). Both nicotine an alkaloids were present but reduced (¶231). ALBINO teaches inclusion of reduced nicotine in cigarettes (¶291).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide a delivery system for delivering tobacco alkaloids other than nicotine, comprising an extract according to claim 22 as taught in ALBINO. A person of ordinary skill in the art would obviously provide cigarettes as a delivery system that delivers both nicotine and tobacco alkaloids. Doing so would provide tobacco products with lower nicotine and TSNA content to a smoker (ALBINO ¶291) to reduce the harmful effects of nicotine (abstract).
Claims 25 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over LILLY and TESSMANN as applied to claims 1-5, 8-11, 14-15, 19-21, 24, 26-27, and 29-32 above and in further view of US 3771533 A (hereinafter ARMSTRONG).
Regarding claim 25, modified LILLY discloses the process of claim 1 as discussed above. Regarding the limitation “no fermentation or essentially no fermentation” LILLY does not make use of the word “fermentation” so it is reasonably presumed that there is no fermentation or essentially no fermentation.
LILLY does not disclose wherein the tobacco starting material is heated for a period of from 36 to 120 hours (Col. 3, lines 8-9).
ARMSTRONG teaches tobacco impregnated with ammonia (abstract) to increase the bulk volume and improve the smoking characteristics and so that a smaller amount of tobacco would be needed to produce a firm cigarette therefore producing lower tar and nicotine (Col. 1, lines 4-13). ARMSTRONG teaches a process wherein the tobacco is enclosed in a vessel for 24 to 96 hours (Col. 4, lines 6-12).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide wherein the tobacco is heated for a period of from 36 to 120 hours as taught in ARMSTRONG. A person of ordinary skill in the art would obviously hold the tobacco in the heated sealed vessel for 24-96 hours because doing so would permit the gasses to be absorbed and react with the moisture present from the ammonium carbonates (ARMSTRONG Col 4, lines 9-13). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 28, modified LILLY discloses the process of claim 1 as discussed above. LILLY does not disclose the tobacco is Burley tobacco wherein the stable fructosazines and deoxyfructosazines comprise 2-Deoxy-2-[(2- hydroxybenzyl) amino]-D-glucopyranose, 2-Deoxy-2-{ [(2S)-2-({[(2-methyl-2-propanyl) oxylcarbonyl} amino) propanoyl]amino} -D-glucopyranose, D-Fructosazine, (1R,2S,3R)-1-(2- Methyl-4-pyrimidinyl)-1,2,3,4-butanetetrol, 2,5-Deoxyfructosazine, 2,6-Deoxyfructosazine, 4- (3-Methyl-2-pyrazinyl)-1,2,3-butanetriol, or a combination thereof.
ARMSTRONG teaches tobacco impregnated with ammonia (abstract) to increase the bulk volume and improve the smoking characteristics and so that a smaller amount of tobacco would be needed to produce a firm cigarette therefore producing lower tar and nicotine (Col. 1, lines 4-13). ARMSTRONG teaches a process wherein the tobacco is enclosed in a vessel for 24 to 96 hours (Col. 4, lines 6-12). ARMSTRONG teaches the Burley tobacco can be used for treatment with ammonia (Example 5, Col. 7, lines 1-11). ARMSTRONG further teaches that the tobacco is cured by any acceptable method known in the industry including air cured (Col. 1, lines 14-22).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified LILLY to provide wherein the tobacco is selected from Virginia, Burley, Oriental, Comum, Amarelinho and Maryland tobaccos, and blends of any of these types and wherein the tobacco is Burley tobacco and wherein the tobacco is air cured, dark air cured, dark fire cured, and sun cured tobacco as taught in ARMSTRONG. The list of tobaccos disclosed by the instant application includes notoriously well-known tobaccos in the tobacco industry. It would have been obvious to one of ordinary skill in the art to use these tobaccos, including Burley, because they are known available tobaccos ready for improvement as detailed in LILLY. Despite LILLY not being directed to Burley tobacco, even LILLY does disclose using Burley tobacco as a control (Example 1), but also acknowledges that the Burley can be replaced, not that it must be replaced (abstract). There is nothing in LILLY that precludes the use of Burley tobacco. With respect to the curing of the tobacco, as with the types of tobacco, the art of curing tobacco by various means is well known in the industry (ARMSTRONG Col. 2, lines 23-35).
Regarding the limitation, the stable fructosazines and deoxyfructosazines comprise 2-Deoxy-2-[(2- hydroxybenzyl) amino]-D-glucopyranose, 2-Deoxy-2-{ [(2S)-2-({[(2-methyl-2-propanyl) oxylcarbonyl} amino) propanoyl]amino} -D-glucopyranose, D-Fructosazine, (1R,2S,3R)-1-(2- Methyl-4-pyrimidinyl)-1,2,3,4-butanetetrol, 2,5-Deoxyfructosazine, 2,6-Deoxyfructosazine, 4- (3-Methyl-2-pyrazinyl)-1,2,3-butanetriol, or a combination thereof, this is rejected for the same reasons as claim 1. These compounds are inherently present in a process that treats tobacco at temperature and pressure. It is not patentable to recite these compounds.
Response to Arguments
Applicant’s arguments, filed December 30, 2025 with respect to the rejection(s) of claims 1-5, 8-11, 14-15, 19-21, 24-25, 27, and 30-32 under 35 USC 103 have been fully considered and are not persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of LILLY and TESSMANN.
The remainder of applicant’s arguments rest upon the allowability of claim 1 as a result of the amendment. However that amendment is rendered obvious by the teachings of FUJISAWA and LILLY
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE L MOORE whose telephone number is (313)446-6537. The examiner can normally be reached Mon - Thurs 9 am to 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE LYNN MOORE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747