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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/30/2026 has been entered.
Status of the Claims
Claims 1, 4-9, and 18-20 are pending and are subject to this Office Action. Claims 19-20 are newly added.
Response to Amendment
The Examiner acknowledges Applicant’s response filed on 3/30/2026 containing
remarks to the claims.
Response to Arguments
Applicant's arguments filed 3/30/2026 have been fully considered but they are not persuasive.
On page 5 the Applicant argues there is no disclosure in Ping of a formulated tobacco composition intended for aerosol generation, and further argues there is no teaching, suggestion, or motivation for a person of ordinary skill in the art to take whole leaf tobacco and treat it using the method of Ping before sheet formation according to the method of Gindrat. The Examiner does not find this to be persuasive because Ping teaches aging the flue cured tobacco with the electric pulse field treatment improves the quality of tobacco leaves ([0006]). Further, Gindrat incorporates by reference US 5,724,998 (page 9, sixth paragraph), which teaches particularly preferred particles are from the following tobacco varieties: Flue-Cured, Turkish, Burley, Virginia, Maryland, Oriental, or any combination of these (Col. 5, lines 20-25). As such it would be obvious to one of ordinary skill in the art the as the tobacco described in Gindrat may be flue-cured, to treat this tobacco material as taught by Ping to improve the quality of the tobacco leaves.
The Applicant’s arguments on pages 5-6 with respect to the reference Fujihira have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
On page 6, the Applicant further argues Ping only discloses the field strength of an electrostatic field and is silent on this parameter for pulsed electric fields and there is nothing in Ping to direct a person of ordinary skill in the art to adopt a pulsed electric field with a field strength great than or equal to about 100V/cm based on Ping. The Examiner does not find this to be persuasive. The prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success. See MPEP § 2143.02. Therefore as Ping 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], and Ping is silent to the field strength of the pulse electric field, 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 following is a modified rejection based on newly found art and previously applied art.
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 18-19 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 Williams (US 6,202,649).
Regarding claims 1, 5, and 19, 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 tobacco composition (tobacco leaf lamina and tobacco leaf stems that are grinded and agglomerated to form sheets of homogenized tobacco material, Pg. 7, lines 23-27).
Combining the tobacco composition with an aerosol-generating agent (As the sheets of homogenized tobacco and may comprise aerosol formers, Pg. 8, lines 11-15).
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 does not appear to explicitly disclose (I) applying a pulsed electric field to the tobacco composition to thereby provide a treated tobacco composition, wherein the pulsed electric field applied to the tobacco composition has a field strength of greater than or equal to about 100V/cm and a pulse frequency of greater than or equal to 250Hz, and (II) wherein the tobacco composition has a moisture content from 10 to 30wt% and wherein the treated tobacco composition has a moisture content of from about 10 to 30wt%.
In regard to (I), Ping, directed to a tobacco treatment, teaches:
Aging flue-cured tobacco by using a pulse electric field ([0005]).
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, it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to treat the tobacco composition of Gindrat by using a pulsed electric field with a pulse frequency of 20-1000 Hz as taught by Ping, because both Gindrat and Ping are directed to tobacco compositions for smoking, Ping teaches this has the advantage of improving the quality of the tobacco leaves, and this merely involves incorporating a known way to process tobacco for a smoking article to a similar tobacco material to yield predictable results. Once the tobacco of Gindrat has been treated with a pulsed electric field, this would thereby provide a treated tobacco composition.
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, the claim 5 range of less than about 5 kV/cm, and the claim 19 range of from 1 kV/cm to 5kV/cm, and is therefore prima facie obvious.
In regard to (II), Gindrat incorporates by reference US 5,724,998 (page 9, sixth paragraph), which teaches particularly preferred particles are from the following tobacco varieties: Flue-Cured, Turkish, Burley, Virginia, Maryland, Oriental, or any combination of these (Col. 5, lines 20-25).
Modified Gindrat does not appear to disclose the moisture content of the tobacco composition and the treated tobacco composition.
However, Williams, directed to a method of treating tobacco, teaches:
At the end of curing, Virginia flue tobacco typically has a moisture content of about 11 to about 15 weight percent (Col. 8, lines 60-65).
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 similar tobacco compositions, 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.
Therefore it would be obvious for one having ordinary skill in the art to make the moisture content of the tobacco composition of modified Gindrat to be about 11 to 15 weight percent as taught by Williams, because both Gindrat and Williams are directed to a method of treating tobacco, Gindrat teaches the tobacco may preferably be Virginia flue-cured tobacco and Williams teaches the moisture content of such tobacco, and this merely involves the selection of a known material (i.e. Virginia flue cured tobacco with a moisture content of 11 to 15 percent) based on its suitability for its intended use.
As Ping teaches the pulsed electric field treatment is applied to flue cured tobacco ([0005]), the tobacco has therefore already been dried and one of ordinary skill in art would reasonably expect the moisture content of the tobacco to be relatively constant pre-treatment and after treatment. Thus, the treated tobacco composition of modified Gindrat has a moisture content of between 11 and 15 weight percent (moisture content of cured Virginia flue tobacco) which falls within the claimed range of from about 10 to 30wt%.
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 and 20 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 Williams (US 6,202,649) as applied to claim 1 above, and further in view of Bao (CN1788630A, citations will refer to the English translation previously provided).
Regarding claims 4 and 20, 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 claim 4 range of from about 10 ns to 5 s and the claim 20 range of less than 1 ms 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 Gellatly (US 5,724,998), Ping (CN1425338A, citations will refer to the English translation provided), and Williams (US 6,202,649).
Regarding claim 1, Reevell 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 tobacco composition ([0017], as the solid-aerosol forming substrate may comprise tobacco).
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 defines combining the 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 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) applying a pulsed electric field to the tobacco composition to thereby provide a treated tobacco composition, wherein the pulsed electric field applied to the tobacco composition has a field strength of greater than or equal to about 100V/cm and a pulse frequency of greater than or equal to 250Hz, and (III) wherein the tobacco composition has a moisture content from 10 to 30wt% and wherein the treated tobacco composition has a moisture content of from about 10 to 30wt%.
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), Reevell is silent to the type of tobacco.
However, Gellatly, directed to reconstituted tobacco sheets to produce filler for smoking articles (Col. 1, lines 15-20), teaches:
Using a reconstituted tobacco sheet decreases the costs associated with manufacturing the smoking article (Col. 5, lines 35-37).
Particularly preferred particles are from the following tobacco varieties: Flue-Cured, Turkish, Burley, Virginia, Maryland, Oriental, or any combination of these (Col. 5, lines 20-25).
Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the tobacco composition of Reevell be a reconstituted tobacco sheet comprising tobacco particles from flue-cured Virginina tobacco as taught by Gellatly, as both Reevell and Gellatly are directed to smoking articles with a tobacco composition, Gellatly teaches having the tobacco be reconstituted tobacco decreases the manufacturing costs, and this merely involves the selection of a known material (i.e. reconstituted tobacco sheet with Virginia flue cured tobacco) based on its suitability for its intended use.
Further, Ping, directed to a tobacco treatment, teaches:
Aging flue-cured tobacco by using a pulse electric field ([0005]).
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, it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to treat the tobacco composition of Reevell by using a pulsed electric field with a pulse frequency of 20-1000 Hz as taught by Ping, because both Reevell and Ping are directed to tobacco compositions for smoking, Ping teaches this has the advantage of improving the quality of the tobacco leaves, and this merely involves incorporating a known way to process tobacco for a smoking article to a similar tobacco material to yield predictable results. Once the tobacco of Reevell has been treated with a pulsed electric field, this would thereby provide a treated tobacco composition.
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 claimed of greater than or equal to about 100 V/cm and is therefore prima facie obvious.
In regard to (III), modified Reevell does not appear to disclose the moisture content of the tobacco composition and the treated tobacco composition.
However, Williams, directed to a method of treating tobacco, teaches:
At the end of curing, Virginia flue tobacco typically has a moisture content of about 11 to about 15 weight percent (Col. 8, lines 60-65).
Therefore, as modified Reevell 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 similar tobacco compositions, that one of ordinary skill could apply to modified Reevell with a reasonable expectation of success, in the tobacco composition having a suitable moisture content prior to undergoing treatment.
Therefore it would be obvious for one having ordinary skill in the art to make the moisture content of the tobacco composition of modified Reevell to be about 11 to 15 weight percent as taught by Williams, because both Reevell and Williams are directed to a method of treating tobacco, modified Reevell teaches the tobacco may preferably be Virginia flue-cured tobacco and Williams teaches the moisture content of such tobacco, and this merely involves the selection of a known material (i.e. Virginia flue cured tobacco with a moisture content of 11 to 15 percent) based on its suitability for its intended use.
As Ping teaches the pulsed electric field treatment is applied to flue cured tobacco ([0005]), the tobacco has therefore already been dried and one of ordinary skill in art would reasonably expect the moisture content of the tobacco to be relatively constant pre-treatment and after treatment. Thus, the treated tobacco composition of modified Gindrat has a moisture content of between 11 and 15 weight percent (moisture content of cured Virginia flue tobacco) which falls within the claimed range of from about 10 to 30wt%.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reevell (US2018/0132534) in view of Gellatly (US 5,724,998), Ping (CN1425338A, citations will refer to the English translation provided), and Williams (US 6,202,649) 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 predictable results.
Conclusion
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/N.A.S./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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