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 amendment and remarks filed December 15, 2025. Claims 1 and 7 have been amended. Claims 2-5 and 14. Claims 15-20 were previously withdrawn. Claims 1, 6-13, and 21 stand rejected.
Election/Restrictions
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 17, 2024.
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, 7, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 20100200006 A1 (hereinafter ROBINSON) in view of US 4928714 A (hereinafter SHANNON) and US 20220125101 A1 (hereinafter HEPWORTH).
Regarding claim 1, ROBINSON discloses a smoking article incorporated within an electrically powered aerosol generating device (abstract). ROBINSON discloses an aerosol-forming substrate portion (Fig. 2, tobacco 89, ¶89) which includes shredded tobacco leaves (¶51, ¶89) and is configured to form the aerosol when electrically heated by the aerosol generation device (¶13-¶14); and a mouthpiece portion (Fig. 1, mouth-end piece 120, ¶94) which is disposed downstream of the aerosol-forming substrate portion to form a downstream end (Fig. 2, mouth-end 15, ¶94) of the aerosol-generating article.
ROBINSON further discloses wherein the aerosol-forming substrate portion does not include a reconstituted tobacco sheet, which is a tobacco material other than the shredded tobacco leaves (¶34). ROBINSON discloses that the aerosol forming substrate is a solid comprising for example, “ tobacco that is incorporated within the smoking article can be employed in various forms; and combinations of various forms of tobacco can be employed, or different forms of tobacco can be employed at different locations within the smoking article. For example, the tobacco can be employed in the form of cut or shredded pieces of lamina or stem” (¶51). Therefore, ROBINSON discloses a substrate containing various forms including shredded lamina (lamina is known to be leaves).
ROBINSON teaches wherein a shredded tobacco leaves content in the aerosol-forming substrate portion is in a range of 150 mg to 200 mg.
ROBINSON teaches that the amount of tobacco incorporated into the smoking article can vary (¶73). ROBINSON teaches that the amount can range from 20 mg at the least to an amount that does not exceed 400 mg, but is usually not to exceed about 250 mg. 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).
ROBINSON teaches wherein a moisture content in the shredded tobacco leaves is in a range of 14% to 17% of a total weight of the shredded tobacco leaves.
ROBINSON teaches a smoking article possessing at least one form of tobacco that can be incorporated within an electrically powered aerosol generating device (abstract). ROBINSON teaches that the moisture content of the tobacco used can vary and often exceeds about 12 weight percent (¶74). ROBINSON teaches that in certain circumstances it can exceed 15 weight percent (¶74). ROBINSON teaches that the tobacco segment can be treated with moisture in order that the tobacco that is subjected to the heating action does not burn to an undesirable extend such that it experiences a controlled smolder (¶111).
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 applied the teaching of ROBINSON to provide wherein a moisture content in the shredded tobacco leaves is in a range of 14% to 17% of a total weight of the shredded tobacco leaves. A person of ordinary skill in the art would obviously increase the moisture content of an aerosol generating article. Doing so would create a heat sink, a concept known to those of ordinary skill in the art, to prevent burning and thereby create a controlled smolder (ROBINSON ¶111).
ROBINSON does not disclose wherein a weight ratio between glycerin and propylene glycol included in the shredded tobacco leaves is in a range of 3:2 to 8:2
ROBINSON discloses that the aerosol forming substrate my comprise a suitable aerosol former. ROBINSON discloses, “exemplary preferred aerosol-forming materials include glycerin, propylene glycol, and mixtures thereof.” (¶62, emphasis added). ROBINSON is silent as to the weight rations of the aerosol formers.
SHANNON teaches a smoking article with an aerosol generating means comprising an aerosol forming substance (abstract). SHANNON teaches that the smoking article has an aerosol forming substance to form an aerosol at high temperatures (Col. 11, lines 31-33). SHANNON teaches that the preferred aerosol forming substances are polyhydric alcohols or mixtures of polyhydric alcohols (Col. 11, lines 52-53). SHANNON teaches that a preferred former is a mixture of glycerin and propylene glycol in a weight ratio from 1:10 to 10:1 (Col. 11, lines 54-56).
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 ROBINSON to provide wherein a weight ratio between glycerin and propylene glycol included in the shredded tobacco leaves is in a range of 3:2 to 9:1 as taught in SHANNON. A person of ordinary skill in the art would obviously provide an aerosol former because doing so would form substantial quantities of aerosol (Col. 3, lines 25-31). Further, with regard to the ratio, 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). Here the ratios of glycerin to propylene glycol overlap. Further SHANNON teaches a wide range of possible ratios of glycerin to propylene glycol. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to move the range as a matter of routine optimization since it has been held that "[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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05.II.A).
Neither ROBINSON nor SHANNON disclose wherein a cutting width of the shredded tobacco leaves is in a range of 1.0 mm to 1.4 mm.
ROBINSON discloses that the tobacco is to be cut and/or shredded (¶12, ¶44, ¶51-¶52). ROBINSON discloses that the cut filler will be apparent to those skilled in the art of tobacco product manufacture and is therefore silent as to the specific width (¶52).
HEPWORTH teaches an article for a non-combustible aerosol provision system (abstract). HEPWORTH teaches that the tobacco material may be provided in the form of a cut rag tobacco (¶96). HEPWORTH teaches that the tobacco has a cut width of between 0.5 mm and 2.0 mm (¶96). HEPWORTH teaches that the cut width is significant to control the pressure drop (¶96).
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 ROBINSON to provide wherein a cutting width of the shredded tobacco leaves is in a range of 1.0 mm to 1.4 mm as taught in HEPWORTH. A person of ordinary skill in the art would obviously control the cut width to a specific range because doing so would create a preferable density and pressure drop (HEPWORTH ¶96). 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 7, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON further teaches wherein a moisture content in the shredded tobacco leaves is in a range of 14.5%to 17% of a total weight of the shredded tobacco leaves.
ROBINSON teaches a smoking article possessing at least one form of tobacco that can be incorporated within an electrically powered aerosol generating device (abstract). ROBINSON teaches that the moisture content of the tobacco used can vary and often exceeds about 12 weight percent (¶74). ROBINSON teaches that in certain circumstances it can exceed 15 weight percent (¶74). ROBINSON teaches that the tobacco segment can be treated with moisture in order that the tobacco that is subjected to the heating action does not burn to an undesirable extend such that it experiences a controlled smolder (¶111).
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 applied the teaching of ROBINSON to provide wherein a moisture content in the shredded tobacco leaves is in a range of 14.5% to 17% of a total weight of the shredded tobacco leaves. A person of ordinary skill in the art would obviously increase the moisture content of an aerosol generating article. Doing so would create a heat sink, a concept known to those of ordinary skill in the art, to prevent burning and thereby create a controlled smolder (ROBINSON ¶111).
Regarding claim 12, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON further teaches wherein the aerosol-forming substrate portion includes: a first substrate segment which does not include the shredded tobacco leaves and includes a moisturizer; and a second substrate segment which is disposed downstream of the first substrate segment and includes the shredded tobacco leaves.
ROBINSON teaches a smoking article possessing at least one form of tobacco that can be incorporated within an electrically powered aerosol generating device (abstract). ROBINSON teaches an embodiment where there are multiple segments (Fig. 2). There is a first substrate (Fig. 2, aerosol-generating material composition 101, ¶100), that has a substrate material (e.g., polyethylene terephthalate fibers) that can be mixed or blended with tobacco filler. Typically, the substrate materials act as carriers for tobacco components and other aerosol-forming materials that can be delivered to the mouth of the smoker (¶100). Consequently this section does not have tobacco leaves, it has filler, and the aerosol-forming materials are considered to be moisturizers (¶59, ¶61-¶62). In the same embodiment, ROBINSON teaches a second segment (Fig. 2, tobacco 89, ¶88). ROBINSON teaches that the tobacco can be tobacco leaf and/or reconstituted tobacco sheet (¶57).
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 applied the teachings of ROBINSON to provide wherein the aerosol-forming substrate portion includes: a first substrate segment which does not include the shredded tobacco leaves and includes a moisturizer; and a second substrate segment which is disposed downstream of the first substrate segment and includes the shredded tobacco leaves. A person of ordinary skill in the art would obviously include multiple segments because doing so would customize the smoke experience by adding different flavors and aerosol-forming materials (ROBINSON ¶73). Further a person of ordinary skill in the art would obviously provide the moisturizing aerosol former in the substrate before the tobacco to provide a visible aerosol (ROBINSON ¶7, ¶62).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over ROBINSON, SHANNON, and HEPWORTH as applied to claims 1, 7, and 12 above and in view of US 5067499 A (hereinafter BANERJEE).
Regarding claim 6, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON does not disclose the shredded tobacco leaves are manufactured through a manufacturing process including a flavoring process; a moisturizer is added during the flavoring process; and a weight ratio between glycerin and propylene glycol included in the moisturizer is in a range of 1:1 to 8:2.
BANERJEE teaches smoking articles using fuel elements that are capable of providing an aerosol that carries any desired flavorants or other desired volatile materials (abstract). BANERJEE teaches that the aerosol generating means may include one or more volatile flavoring agents (Col. 22, lines 55-59). BANERJEE further teaches an example where the substrate has a solution of glycerin and propylene glycol added in a 1:1 ratio (Col. 30, lines 5-13). BANERJEE teaches that aerosol forming materials such as glycerin and propylene glycol are added to form the aerosol at the temperatures present when the aerosol generating means is heated (Col. 18, lines 21-34).
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 ROBINSON to provide the shredded tobacco leaves are manufactured through a manufacturing process including a flavoring process; a moisturizer is added during the flavoring process; and a weight ratio between glycerin and propylene glycol included in the moisturizer is in a range of 1:1 to 8:2 as taught in BANERJEE. A person of ordinary skill in the art would obviously provide an aerosol former because doing so would form the aerosol at the temperatures present (Col. 18, lines 21-34). Further, with regard to the ratio, 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). Here the ratio of glycerin to propylene glycol overlap as an aerosol generator. Finally, BANERJEE clearly teaches use of a flavorant on the substrate (abstract). A person of ordinary skill in the art would obviously include a flavorant to flavor an aerosol.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over ROBINSON, SHANNON, and HEPWORTH as applied to claims 1, 7, and 12 above in view of US 20050066986 A1 (hereinafter NESTOR).
Regarding claim 8, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON further discloses wherein the aerosol-forming substrate portion further includes a wrapper wrapped around the shredded tobacco leaves (Fig. 2, wrapping material 160, ¶97).
ROBINSON does not disclose an adhesive is applied on at least a portion of the wrapper.
NESTOR teaches a smokable rod for a smoking article (abstract). NESTOR teaches a wrapping material for the rod that is secured at the side seam with a seam adhesive (¶100).
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 ROBINSON to provide an adhesive is applied on at least a portion of the wrapper as taught in NESTOR. A person of ordinary skill in the art would obviously provide an adhesive on the wrapping paper because doing so would secure the seam (NESTOR ¶100).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over ROBINSON, SHANNON, and HEPWORTH as applied to claims 1, 7, and 12 above in view of US 20140290678 A1 (hereinafter BESSO).
Regarding claim 9, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON does not disclose wherein a resistance to draw of the mouthpiece portion is in a range of 90 mm WG to 140 mm WG.
ROBINSON discloses that preferred smoking articles exhibit a desirable resistance to draw (¶118). ROBINSON discloses that a pressure drop of between about 50 mm and 200 mm water pressure is expected, but that between about 70 to 150 are more preferable (¶118). ROBINSON is silent as to the pressure drop across the individual portions.
BESSO teaches a smoking article comprising a mouthpiece (abstract). BESSO teaches that the mouthpiece has a resistance to draw between about 100 mm WG and about 180 mm WG (¶69). BESSO teaches that the segments are used to achieve a desired overall resistance to draw (¶68).
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 ROBINSON to provide wherein a resistance to draw of the mouthpiece portion is in a range of 90 mm WG to 140 mm WG as taught in BESSO. A person of ordinary skill in the art would obviously include segments with specific RTD because doing so would achieve a desired overall resistance to draw (BESSO ¶68). 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).
Claims 10-11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over ROBINSON, SHANNON, and HEPWORTH as applied to claims 1, 7, and 12 above in view of US 20140373856 A1 (hereinafter ZUBER).
Regarding claim 10, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON does not disclose a support segment disposed downstream of the aerosol-forming substrate portion and configured to support the aerosol-forming substrate portion; and a cooling segment disposed between the support segment and the mouthpiece portion and configured to cool the formed aerosol.
ZUBER teaches a support segment (Fig. 1, tube 6, ¶57) disposed downstream of the aerosol-forming substrate portion and configured to support the aerosol-forming substrate portion (¶57). ZUBER teaches that one function of the tube is to locate the aerosol forming substrate vis-à-vis the heating element (¶57). ZUBER further teaches a cooling segment (Fig. 1, transfer section 4, ¶58) disposed between the support segment and the mouthpiece portion and configured to cool the formed aerosol. ZUBER teaches that the transfer section allow volatile substances released from the substrate to enter the mouth of the user cooled to form an aerosol (¶57).
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 ROBINSON to provide a support segment disposed downstream of the aerosol-forming substrate portion and configured to support the aerosol-forming substrate portion; and a cooling segment disposed between the support segment and the mouthpiece portion and configured to cool the formed aerosol as taught in ZUBER. ROBINSON discloses a multisegmented article to provide segments with specialized functions (ROBINSON ¶3, ¶73, ¶78). ROBINSON further encourages the inclusion or elimination of additional segments (ROBINSON ¶89). ROBINSON discloses that a mouthpiece end may be adapted to act as a support (ROBINSON ¶109). Further the mouthpiece of ROBINSON necessarily cools the vapor because it is positionally distant from the heater and as the vapor moves through the device during smoking it cools, especially in the filter material of ROBINSON. Therefore it would have been obvious to one of ordinary skill in the art to include additional segments such as a support segment and a cooling segment. Doing so would support and position the aerosol forming portion (ZUBER ¶57) and cool volatiles to form a customized aerosol for the user (ZUBER ¶58).
Regarding claim 11, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON further discloses a first filter segment (Fig. 2, filter element 200, ¶108) disposed upstream of the aerosol-forming substrate portion and configured to form an upstream end of the aerosol-generating article.
ROBINSON does not disclose a second filter segment disposed between the aerosol-forming substrate portion and the mouthpiece portion and including a channel configured to pass the formed aerosol.
ZUBER teaches a second filter segment (Fig. 1, transfer section 4, ¶58) disposed between the aerosol-forming substrate portion (Fig. 1, aerosol-forming substrate 7, ¶56) and the mouthpiece portion (Fig. 1, mouthpiece filter 3, ¶59) and including a channel configured to pass the formed aerosol (As shown in Fig. 1, ¶52, ¶72).
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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 ROBINSON to provide a second filter segment disposed between the aerosol-forming substrate portion and the mouthpiece portion and including a channel configured to pass the formed aerosol as taught in ZUBER. ROBINSON discloses a multisegmented article to provide segments with specialized functions (ROBINSON ¶3, ¶73, ¶78). ROBINSON further encourages both the inclusion of or elimination of additional segments (ROBINSON ¶89). Therefore it would have been obvious to one of ordinary skill in the art to include additional segments such as a second filter segment. The court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). See MPEP 2144.04, VI, Part B. In this case, a second filter segment would predictably provide additional filtering to the aerosol. Regarding the limitation of a channel, ZUBER teaches tube with an aperture to both locate the substrate and prevent the substrate from being forced along the rod when inserted into the electronic device (¶57) . A person of ordinary skill in the art would obviously include sections with channel. Doing so would support and position the aerosol forming portion (ZUBER ¶57) and cool volatiles to form a customized aerosol for the user (ZUBER ¶58).
Regarding claim 21, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON further discloses a first filter segment (Fig. 2, filter element 200, ¶108) disposed upstream of the aerosol-forming substrate portion and configured to form an upstream end of the aerosol-generating article.
ZUBER teaches a support segment (Fig. 1, tube 6, ¶57) disposed downstream of the aerosol-forming substrate portion and configured to support the aerosol-forming substrate portion (¶57). ZUBER teaches that one function of the tube is to locate the aerosol forming substrate vis-à-vis the heating element (¶57). ZUBER further teaches a cooling segment (Fig. 1, transfer section 4, ¶58) disposed between the support segment and the mouthpiece portion and configured to cool the formed aerosol. ZUBER teaches that the transfer section allow volatile substances released from the substrate to enter the mouth of the user cooled to form an aerosol (¶57).
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 ROBINSON to provide a support segment disposed downstream of the aerosol-forming substrate portion and configured to support the aerosol-forming substrate portion; and a cooling segment disposed between the support segment and the mouthpiece portion and configured to cool the formed aerosol as taught in ZUBER. ROBINSON discloses a multisegmented article to provide segments with specialized functions (ROBINSON ¶3, ¶73, ¶78). ROBINSON further encourages the inclusion or elimination of additional segments (ROBINSON ¶89). ROBINSON discloses that a mouthpiece end may be adapted to act as a support (ROBINSON ¶109). Further the mouthpiece of ROBINSON necessarily cools the vapor because it is positionally distant from the heater and as the vapor moves through the device during smoking it cools, especially in the filter material of ROBINSON. Therefore it would have been obvious to one of ordinary skill in the art to include additional segments such as a support segment and a cooling segment. Doing so would support and position the aerosol forming portion (ZUBER ¶57) and cool volatiles to form a customized aerosol for the user (ZUBER ¶58).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over ROBINSON, SHANNON, and HEPWORTH as applied to claims 1, 7, and 12 above in view of US 4821749 A (hereinafter TOFT) and NESTOR.
Regarding claim 13, modified ROBINSON discloses the aerosol generating article of claim 1 as discussed above. ROBINSON does not disclose the shredded tobacco leaves are manufactured through a manufacturing process including a first flavoring process and a second flavoring process performed after the first flavoring process; and an amount of moisturizer added during the second flavoring process is in a range of about 2 wt % to 4 wt % of a total weight of the shredded tobacco leaves.
TOFT teaches extruded tobacco that has its chemical composition changed in an extrusion process for a product that can be reformed into an extrude shape (abstract). TOFT teaches that flavorants can be incorporated into the mixture and that the flavor additives can be added at various stages apparent to the skilled artisan (Col. 5, lines 51-60). TOFT further teaches that a humectant (moisturizer) can be added (Col. 5, lines 48-50). TOFT teaches that the amount of glycerin or other humectant added in the binding process is minor (Col 4, lines 10-13).
Neither ROBINSON nor TOFT disclose an amount of moisturizer added during the second flavoring process is in a range of about 2 wt % to 4 wt % of a total weight of the shredded tobacco leaves.
NESTOR teaches a smokable rod for a smoking article (abstract). NESTOR teaches that including reconstituted tobacco reduces waste in tobacco production (¶51). NESTOR teaches the addition of glycerin to provide for blend processing and that about 3% is sufficient based on the total weight of the blend (¶146). NESTOR teaches that the amount of glycerin can be as high as 12 percent (¶146).
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 ROBINSON to provide the shredded tobacco leaves are manufactured through a manufacturing process including a first flavoring process and a second flavoring process performed after the first flavoring process; and an amount of moisturizer added during the second flavoring process is in a range of about 2 wt % to 4 wt % of a total weight of the shredded tobacco leaves as taught in TOFT and NESTOR. First a person of ordinary skill in the art would obviously have a two part flavoring process. Doing so would allow the addition of multiple flavors (TOFT Col. 5, lines 51-60). Additionally, a person of ordinary skill in the art would incorporate a moisturizer in the second separate binding step to bind the materials together (TOFT Col 4, lines 10-13). Finally, a person of ordinary skill in the art would add a minor amount of glycerin as the moisturizer (TOFT Col 4, lines 10-13) as low as 3% (NESTOR ¶146). Doing so would allow for blend processing of the tobacco material (NESTOR ¶146). 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).
Response to Arguments
Applicant’s arguments and amendments, filed December 15, with respect to the rejection of claim 1 under 35 USC 10 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of ROBINSON, SHANNON, and HEPWORTH.
The new grounds of rejection are made in response to applicant’s amendment to claim 1, are explained in detail above, and are not repeated here.
The remainder of applicant’s arguments rely upon the amended claim 1 being allowable. As explained above, ROBINSON, SHANNON, and HEPWORTH render claim 1 obvious.
Conclusion
Applicant's amendment necessitated the new grounds 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.
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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