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 1, 4-9, and 18 are pending and are subject to this Office Action.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 12/8/2025 containing
remarks to the claims.
Response to Arguments
Applicant's arguments filed 12/08/2025 have been fully considered but they are not persuasive. Claim 1 was rejected under 35 USC 103 as being unpatentable over Gindrat (WO2012/164009) in view of Ping (CN1425338A, citations refer to the English translation previously provided) and Fujihira (WO2018/139068, citations refer to the English equivalent US2019/0350251).
On page 5, the Applicant argues that Ping fails to teach applying a pulsed electric field (PEF) to a tobacco composition of the type recited in claim 1, as Ping is directed to post-curing ageing of whole flue-cured tobacco leaves in bulk chambers. The material exposed to the electric field in Ping is untreated, unprocessed leaf in its natural state, and not a formulated tobacco composition intended for aerosol generation. The Examiner does not find this to be persuasive because Ping is used to modify the tobacco of Gindrat prior to the tobacco being processed into the formulated tobacco substrate for aerosol generation. Gindrat teaches the sheets of tobacco material used in the smoking article may comprise particulate tobacco formed by comminuting tobacco leaf lamina and steams, and through particulate tobacco by-products formed during the treating of tobacco (see Page 7, 11th paragraph). As such the tobacco used in the smoking article of Gindrat may be untreated, unprocessed leaf in its natural state that undergoes treatment and then is incorporated into the smoking article. Ping merely teaches a way to treat this tobacco prior to it being processed into the smoking article.
On pages 5-6, the Applicant further argues that Ping contains no link or suggestion that PEF treatment should be performed on tobacco of controlled moisture content for any purpose, and the combination of Ping and Fujihara relies on selecting discrete unrelated features from each reference without any motivation for a person of ordinary skill in the art to make such a combination. The Examiner does not find this to be persuasive because as Ping is silent to the moisture content of the tobacco undergoing treatment, it would be obvious for one of ordinary skill in the art to be motivated to look to other known teachings of tobacco compositions prior to treatment, that one could apply with a reasonable expectation of success in the tobacco composition having a suitable moisture content prior to undergoing treatment. Further, Fujihira teaches drying the tobacco to a moisture content of 10 to 25 wt.% prior to treating the tobacco enhances adhesion of flavor components. As such it would be obvious to one of ordinary skill to incorporate this moisture content to the tobacco treatment of Gindrat in view of Ping because Fujihira teaches a motivation of enhancing adhesion of flavor components and this is merely a known moisture content of tobacco prior to undergoing tobacco treatment.
On page 6, the Applicant further argues that Ping describes a broad pulse-frequency range from 20 Hz to 1 kHz as opposed to the specific minimum frequency of 250 Hz as recited in claim 1; MPEP § 2155.05(III)(D) discloses one factor that may weigh against maintaining an obviousness rejection based on optimization of a variable disclosed in a range in the prior art is where an applicant establishes that the prior art disclosure of the variable is within a range that is so broad in light of the dissimilar characteristics of the members of the range as to not invite optimization by one of skill in the art; and there is no teaching or suggestion in Ping that higher frequency pulses or pulses at or above 250 Hz achieve any particular effect. The Examiner does not find this to be persuasive because the range taught by the prior art is less broad than the claimed range, which has no upper boundary and therefore the claimed range is not within a range that is so broad in light of the dissimilar characteristics of the members of the range. Further, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists and a prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness, see MPEP § 2144.05.I. The burden is on the Applicant to show criticality of the claimed range, see MPEP § 2144.05.III.A.
On page 6, the Applicant further argues Ping is exclusively concerned with processes for combustible tobacco and a person of ordinary skill in the art would not have been motivated to rely on Ping as relevant prior art when addressing problems associated with the manufacture of heat-not-burn aerosol-generating materials. The Examiner does not find this to be persuasive because Ping teaches a method of treating tobacco through electromagnetic field treatment (see paragraph [0002]). As Gindrat teaches a smoking article with tobacco, it would be obvious for one of ordinary skill in the art to use this type of tobacco treatment for the tobacco in Gindrat. Further, Gindrat teaches the tobacco used in the heated smoking article may be from treated tobacco (other particulate tobacco by-products formed during the treating of tobacco, Page 7, 11th paragraph), and therefore it is evident that treated tobacco may be used in heated smoking articles.
The following is the maintained rejection.
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.
Claim(s) 1, 5-8, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gindrat (WO2012/164009) in view of Ping (CN1425338A, citations will refer to the English translation provided) and Fujihira (WO2018/139068, citations will refer to the English equivalent US2019/0350251).
Regarding claims 1 and 5, Gindrat discloses:
A method of making an aerosol-generating article (i.e. smoking article) containing an aerosol-generating component (i.e. rod; Claim 25, a method of forming a rod, and Claim 11, use of a rod in a smoking article).
Wherein the aerosol-generating article produces an inhalable aerosol upon heating but not burning the aerosol-generating article (Pg. 6, lines 16-17, rods according to the invention may be used in…heated smoking articles) the method comprising:
Providing a treated tobacco composition (Pg. 7, lines 27-32, wherein the tobacco dust, tobacco fines, and other particulate tobacco by-products formed during the treating of tobacco is considered to read on a treated tobacco composition).
Combining the treated tobacco composition with an aerosol-generating agent (As the sheets of homogenized tobacco are formed of the treated tobacco composition, Pg. 7, lines 27-32, and may comprise aerosol formers, Pg. 8, lines 11-15, this reads on combining the treated tobacco composition with an aerosol-generating agent).
To provide an aerosol-generating component comprising greater than or equal to 8% aerosol-generating agent by weight of the aerosol-generating component (Pg. 11, lines 11-14, wherein the sheet of tobacco material has an aerosol former content of greater than 5%). The range taught by the prior art overlaps the claimed range of greater than or equal to 8%, and is therefore considered prima facie obvious.
Forming the aerosol-generating article to include the aerosol-generating component (Claim 11, use of a rod in a smoking article).
Gindrat is silent to (I) how the treated tobacco composition has been treated and (II) the moisture content of the tobacco composition and the treated tobacco composition.
In regard to (I), Ping, directed to a tobacco treatment, teaches:
Aging flue-cured tobacco by using a pulse electric field [0005]. The flue-cured tobacco is considered to define a tobacco composition, and once processed the pulse electric field, defines a treated tobacco composition. Using the pulse electric field to process the tobacco composition is considered to read on the claim limitation applying a pulsed electric field to the tobacco composition to thereby provide a treated tobacco composition.
The pulse frequency is 20Hz to 1KHz [0005], or 20Hz to 1000 Hz. The range taught by the prior art overlaps the claimed range of greater than or equal to about 250 Hz and is therefore prima facie obvious.
The invention has the advantages of shortening the aging time, improving the quality of tobacco leaves, and protecting the ecological environment [0006].
Therefore, as Gindrat is silent to how the treated tobacco composition has been treated, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of treating tobacco compositions that one of ordinary skill could apply to Gindrat with a reasonable expectation of success in the tobacco composition being suitably processed for use in a smoking article. Further, the specific tobacco treatment as taught by Ping by has the advantage of shortening the aging time, improving the quality of tobacco leaves, and protecting the ecological environment. As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate to Gindrat the method of processing tobacco using pulse electricity with a pulse frequency of 20-1000 Hz as taught by Ping, because both Gindrat and Ping are directed to tobacco smoking, Ping teaches this has the advantage of shortening the aging time, and this merely involves incorporating a known way to treat tobacco (i.e. using pulse electricity) to a similar tobacco material to yield predicable results.
Ping does not appear to explicitly teach the pulse electric field strength, but teaches the field strength of an electrostatic field of 0.4KV/cm – 2KV/cm (or 400 to 2000 V/cm) that may be alternating used with the pulse electric field [0005]. As such it would be obvious to one having ordinary skill in the art that the field strength of the electrostatic field could be applied to the pulse electric field with a reasonable expectation of success. The range taught by the prior art overlaps the claim 1 range of greater than or equal to about 100 V/cm and the claim 5 range of less than about 5 kV/cm and is therefore prima facie obvious.
In regard to (II), Fujihira, directed to a method for manufacturing tobacco raw material, teaches:
A method of imparting a treatment to a tobacco material ([0008]). The method comprising drying a post-harvest unstripped leaf tobacco to a moisture content of 10 to 25 wt. %; subjecting the dried unstripped leaf tobacco to a…treatment ([0013]).
Drying the tobacco to a moisture content of 10 to 25 wt.% increases the content (adhesion amount) of the specific flavor components that are provided by the smoke treatment ([0057]).
The tobacco material may also be used in a heating flavor inhaler… an inhaler in which the tobacco material is heated without combustion and the user experiences the flavor of the heated tobacco material by inhalation ([0146]-[0148]).
Therefore, as modified Gindrat is silent to the moisture content of the tobacco composition, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of tobacco compositions prior to treating, that one of ordinary skill could apply to modified Gindrat with a reasonable expectation of success, in the tobacco composition having a suitable moisture content prior to undergoing treatment. As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate to Gindrat drying the tobacco to a moisture content of 10 to 25 wt.% prior to treating the tobacco as taught by Fujihira, because both Gindrat, Ping, and Fujihira are directed to heating tobacco products, Fujihira teaches drying enhances adhesion of flavor components prior to treatment, and this merely involves incorporating a known way to dry tobacco (i.e. to a moisture content of 10 to 25 wt.%) prior to undergoing tobacco treatment to a similar tobacco material to yield predictable results.
Modified Gindrat incorporates the tobacco treatment process as taught by Ping. As there is no teaching of the treatment process impacting the tobacco composition’s moisture content, it would be obvious to one of ordinary skill in the art that the pre-treated and treated tobacco composition have a similar moisture content, and therefore the treated tobacco composition has a moisture content of from about 10 to 25 wt.%.
Regarding claim 6, Ping further teaches wherein the applying of the pulsed electric field is carried out for a duration of 1 to 10 hours ([0005], or 60 to 600 minutes. The range taught by the prior art overlaps the claimed range of carried out for a duration of from about 10 to 600 minutes, and is therefore considered prima facie obvious.
Regarding claim 7, Gindrat further teaches:
Wherein the tobacco composition comprises leaf tobacco, tobacco strips, tobacco stems, ground tobacco or a combination thereof (Ground tobacco, Pg. 7, lines 27-32, tobacco dust, tobacco fines, and other particulate tobacco by-products).
Regarding claim 8, Gindrat further teaches:
Wherein combining the treated tobacco composition with the aerosol-generating agent to provide the aerosol-generating component comprises mixing the aerosol-generating agent with the treated tobacco composition (As the sheets of homogenized tobacco are formed of the treated tobacco composition, Pg. 7, lines 27-32, and may comprise aerosol formers, Pg. 8, lines 11-15, this reads on mixing the treated tobacco composition with an aerosol-generating agent).
Regarding claim 18, Gindrat further teaches the sheet of homogenized tobacco material has an aerosol former content of between 5% and 30% by weight on a dry weight basis (page 11, third paragraph), which equates to a dry weight ratio of the aerosol generation agent to the tobacco composition between 1:20 to 3:10. The range taught by the prior art overlaps the claimed range of about 10:1 to about 1:10 and is therefore prima facie obvious.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gindrat (WO2012/164009) in view of Ping (CN1425338A, citations will refer to the English translation provided) and Fujihira (WO2018/139068, citations will refer to the English equivalent US2019/0350251) as applied to claim 1 above, and further in view of Bao (CN1788630A, citations will refer to the English translation previously provided).
Regarding claim 4, Gindrat in view of Ping is silent to the pulse width of the pulsed electric field.
Bao, directed to a method of improving flue-cured tobacco, teaches:
Pulse electricity to process flue-cured tobacco [0007]. The pulsed electric field has a pulse width of less than 300 ns [0007].
Therefore, as Gindrat in view of Ping is silent to the pulse width of the pulsed electric field, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of pulse electricity treatments of tobacco, that one of ordinary skill could apply to modified Gindrat with a reasonable expectation of success, in the pulse electricity treatment having a suitable pulse width for treating tobacco. As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate to modified Gindrat the pulsed electric field having a pulse width of less than 300 ns as taught by Bao, because both Ping, and Bao are directed to treating tobacco with a pulsed electric field, and this merely involves incorporating a known pulse width to treat tobacco using a pulsed electric field to yield predictable results.
The range taught by the prior art overlaps the claimed range of from about 10 ns to 5 s, and is therefore prima facie obvious.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US2018/0132534) in view of Ping (CN1425338A, citations will refer to the English translation provided) and Fujihira (WO2018/139068, citations will refer to the English equivalent US2019/0350251).
Regarding claim 1, Reevell further teaches:
A method of making an aerosol-generating article (aerosol-generating system 10, figure 3, [0096]) containing an aerosol-generating component (liquid aerosol-forming substrate 32 and solid aerosol-forming substrate 36, figure 3, [0099]-[0101]).
Wherein the aerosol-generating article produces an inhalable aerosol upon heating but not burning the aerosol-generating article ([0003], i.e. electrically operated smoking system) the method comprising:
Providing a treated tobacco composition ([0017], as the solid-aerosol forming substrate may comprise tobacco, this reads on a treated tobacco composition).
The liquid aerosol-forming substrate may comprise an aerosol former ([0079]). During use of the aerosol-generating system, air is drawn into the system…where vaporized liquid aerosol forming substrate is entrained in the airflow…and then through the solid aerosol forming substrate where volatile compounds from the solid aerosol-forming substrate 46 are entrained in the airflow ([0102]). Therefore, this reads on the claim limitation combining the treated tobacco composition with an aerosol-generating agent.
Forming the aerosol-generating article to include the aerosol-generating component (as shown in figure 3).
Reevell does not appear to explicitly disclose (I) wherein the treated tobacco composition combined with an aerosol-generating agent provides an aerosol-generating composition comprising greater than or equal to 8% aerosol-generating agent by weight of the aerosol-generating component, (II) how the treated tobacco composition has been treated and (III) the moisture content of the tobacco composition and the treated tobacco composition.
In regard to (I), Reevell further teaches:
The solid aerosol-forming substrate may have an aerosol former content of approximately 20 percent on a dry weight basis ([0078]). The liquid aerosol-forming substrate may comprise an aerosol-former ([0079]). Variation of the airflow through the aerosol-generating system may vary a ratio of airflow through the solid-aerosol-forming substrate to airflow bypassing the solid-aerosol-forming substrate. A variation of airflow through the aerosol-generating system facilitates customization of the vaping experience ([0042]).
As such it would be obvious to one of ordinary skill in the art to modify the ratio of airflow through the solid-aerosol-forming substrate to create a customized vaping experience. Modifying the ratio would modify the amount of vaporized liquid aerosol forming substrate entrained in the airflow and the amount volatile compounds from the solid aerosol-forming substrate entrained in the airflow. As the solid aerosol-forming substrate has an aerosol former content of 20 percent on a dry weight basis as described previously, one of the customized experiences may include combining the treated tobacco composition with an aerosol-generating agent to provide an aerosol-generating component comprising greater than or equal to 8% aerosol-generating agent by weight of the aerosol-generating component.
In regard to (II), Ping, directed to a tobacco treatment, teaches:
Aging flue-cured tobacco by using a pulse electric field [0005]. The flue-cured tobacco is considered to define a tobacco composition, and once processed the pulse electric field, defines a treated tobacco composition. Using the pulse electric field to process the tobacco composition is considered to read on the claim limitation applying a pulsed electric field to the tobacco composition to thereby provide a treated tobacco composition.
The pulse frequency is 20Hz to 1KHz [0005], or 20Hz to 1000 Hz. The range taught by the prior art overlaps the claimed range of greater than or equal to about 250 Hz and is therefore prima facie obvious.
The invention has the advantages of shortening the aging time, improving the quality of tobacco leaves, and protecting the ecological environment [0006].
Therefore, as Gindrat is silent to how the treated tobacco composition has been treated, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of treating tobacco compositions that one of ordinary skill could apply to Gindrat with a reasonable expectation of success in the tobacco composition being suitably processed for use in a smoking article. Further, the specific tobacco treatment as taught by Ping by has the advantage of shortening the aging time, improving the quality of tobacco leaves, and protecting the ecological environment. As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate to Gindrat the method of processing tobacco using pulse electricity with a pulse frequency of 20-1000 Hz as taught by Ping, because both Gindrat and Ping are directed to tobacco smoking, Ping teaches this has the advantage of shortening the aging time, and this merely involves incorporating a known way to treat tobacco (i.e. using pulse electricity) to a similar tobacco material to yield predicable results.
Ping does not appear to explicitly teach the pulse electric field strength, but teaches the field strength of an electrostatic field of 0.4KV/cm – 2KV/cm (or 400 to 2000 V/cm) that may be alternating used with the pulse electric field [0005]. As such it would be obvious to one having ordinary skill in the art that the field strength of the electrostatic field could be applied to the pulse electric field with a reasonable expectation of success. The range taught by the prior art overlaps the claim 1 range of greater than or equal to about 100 V/cm and the claim 5 range of less than about 5 kV/cm and is therefore prima facie obvious.
In regard to (III), Fujihira, directed to a method for manufacturing tobacco raw material, teaches:
A method of imparting a treatment to a tobacco material ([0008]). The method comprising drying a post-harvest unstripped leaf tobacco to a moisture content of 10 to 25 wt. %; subjecting the dried unstripped leaf tobacco to a…treatment ([0013]).
Drying the tobacco to a moisture content of 10 to 25 wt.% increases the content (adhesion amount) of the specific flavor components that are provided by the smoke treatment ([0057]).
The tobacco material may also be used in a heating flavor inhaler… an inhaler in which the tobacco material is heated without combustion and the user experiences the flavor of the heated tobacco material by inhalation ([0146]-[0148]).
Therefore, as modified Gindrat is silent to the moisture content of the tobacco composition, it would be obvious for one having ordinary skill in the art to be motivated to look to other known teachings of tobacco compositions prior to treating, that one of ordinary skill could apply to modified Gindrat with a reasonable expectation of success, in the tobacco composition having a suitable moisture content prior to undergoing treatment. As such, it would be obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate to Gindrat drying the tobacco to a moisture content of 10 to 25 wt.% prior to treating the tobacco as taught by Fujihira, because both Gindrat, Ping, and Fujihira are directed to heating tobacco products, Fujihira teaches drying enhances adhesion of flavor components prior to treatment, and this merely involves incorporating a known way to dry tobacco (i.e. to a moisture content of 10 to 25 wt.%) prior to undergoing tobacco treatment to a similar tobacco material to yield predictable results.
Modified Gindrat incorporates the tobacco treatment process as taught by Ping. As there is no teaching of the treatment process impacting the tobacco composition’s moisture content, it would be obvious to one of ordinary skill in the art that the pre-treated and treated tobacco composition have a similar moisture content, and therefore the treated tobacco composition has a moisture content of from about 10 to 25 wt.%.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US2018/0132534) in view of Ping (CN1425338A, citations will refer to the English translation provided) and Fujihira (WO2018/139068, citations will refer to the English equivalent US2019/0350251) as applied to claim 1 above, and further in view of Luo (CN107536115A, citations will refer to the English translation provided).
Regarding claim 9, Reevell further teaches wherein combining the treated tobacco composition with the aerosol-generating agent to provide an aerosol-generating component and forming the aerosol-generating article comprises:
Providing the aerosol-generating agent in a first chamber of a housing ([0099], figure 3, wherein the vaporizer section 14 comprising the liquid aerosol-forming substrate 32 is considered to read on providing the aerosol-generating agent in a first chamber of a housing).
Providing the treated tobacco composition in a second chamber of the housing ([0101], figure 3, wherein the solid aerosol-forming substrate 46 is positioned within the cartridge housing 40), the first chamber being in fluid communication with the second chamber (as shown in figure 3).
As the liquid-aerosol forming substrate may comprise an aerosol former ([0079]), and the solid-aerosol forming substrate may comprise an aerosol former ([0073]), and therefore the solid-aerosol forming substrate may also not comprise an aerosol former, when the vapor streams of the solid and liquid aerosol forming substrate are mixed this would therefore read on wherein combining the treated tobacco composition with the aerosol-generating agent to provide an aerosol-generating component, providing the aerosol-generating agent in a first chamber of the housing and providing the treated tobacco composition in a second chamber of the housing.
Alternatively, Luo, directed to an aerosol-generating article for a heat-not-burn cigarette, teaches:
A heat-not-burn cigarette that does not contain any smoking material (i.e. aerosol-generating agent) in the constituent material of the tobacco segment ([0027]).
The heat-not-burn cigarette of the present invention does not contain any smoking material in the constituent materials of the tobacco segment, so there will be no pollution and deformation of the external wrapping material due to the smoking material absorbing moisture, and there will be no mold caused by long-term storage ([0027]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Reevell by configuring the solid tobacco segment to not contain any aerosol former as taught by Luo, yielding all the aerosol former to be comprised in the liquid aerosol-forming substrate, because both Reevell and Luo are directed to electronic smoking devices, Luo teaches this has the advantage of there being no mold during long-term storage, and this merely involves incorporating a known way to configure aerosol-formers (i.e. to not be included in a tobacco segment of a smoking article) to a similar smoking device to yield predicable results.
Conclusion
THIS ACTION IS MADE FINAL. 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 Nicole A Szumigalski whose telephone number is (703)756-1212. The examiner can normally be reached Monday - Friday: 8:00 - 4:30 EST.
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755