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 .
Election/Restrictions
The applicant argues that claim 37 has been amended rendering the election by original presentation moot. The examiner disagrees. The amendment of the claim is not a proper response to an election by original presentation. The election has not been traversed with any specific discussion as to why it was incorrect. Claim 37 has been withdrawn and should be identified as “withdrawn – currently amended”.
Response to Arguments
Applicant's arguments filed 2/02/2026 have been fully considered but they are not persuasive.
Applicant’s arguments concerning the combination of references due to different properties have been addressed in prior office actions.
Applicant’s arguments concerning Schmidt’s “teaching away” from using long fibers have been addressed in prior office actions.
Applicant’s arguments concerning the amount of glycerin have been addressed in prior office actions.
The applicant argues that Baggett does discloses the amounts of aerosol precursors only in terms of the tobacco material. In the prior office action, the examiner indicated that although this is correct, Baggett also discloses that the tobacco material is present in amounts that are preferable 3 or 4 times the amount of the base material. Therefore, the range of 5-20% of the tobacco material represents a range from 2.6% to 15% of the entire product is aerosol precursor when the tobacco material is present as 3 or 4 parts to 1 part base material (i.e. 3 or 4 times the base material).
Furthermore, Baggett et al. also disclose the relationship between the tobacco layer and the base layer (col. 12, lines 21-33). As disclosed, the tobacco material is 76 to 80% of the total. Therefore, the preferred range of glycerin when considered in terms of both layers together is 3.8 to 5.6%, which still overlaps the range of 2.9 to 8%. In addition, the broader range disclosed by Baggett et al. goes up to 14% of the tobacco material, which equates to approximately 11% of the total sheet. This range encompasses the range claimed.
In addition, although the instant application states that the total material has the claimed range, the method for making the product does not support the range. Instead, a slurry is produced with 2.9 to 8.5 percent on a dry weight basis of the slurry. This slurry does not include the substrate sheet and would not result in 2.9 to 8.5 percent on the dry weight basis of the entire sheet (substrate and material containing alkaloids). It is unclear if the applicant has sufficient disclosure of how to make the claimed invention.
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.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Baggett Jr. (US 5,499,636) in view of Schmidt et al. (US 4,306,578).
Regarding claims 15, 24-27, Baggett Jr. et al. disclose a smoking article containing a base web (i.e. first layer) upon with a coating is applied (i.e. second layer) that contains powdered tobacco (100-220 mesh (63-149 micrometers), approximately 120 mesh (125 micrometers), col. 14, 23-46), glycerin (aerosol former) and no binder (i.e. 0% binder) or 0.5-2% pectin (col. 12, 44-55).
The base web is composed of tobacco and another fiber such as wood or flax with a ratio of 2:1 to 4:1 (col. 12, 1-13). The wood fiber, which inherently formed of cellulose, is added to strengthen the base web.
Baggett Jr. et al. disclose that glycerin can be added at 10-14%, but that when added at 5-7%, a product more resistant to collapse is formed. It would have been obvious to one of ordinary skill in the art at the time of invention to use the lower amount of glycerin to form a product resistant to collapse (col. 12, 34-43).
Although Baggett, Jr. et al. disclose wood fiber, they do not expressly disclose that the base web includes fibers having a mean fiber length between 1 and 5 mm. However, it is known in the art that wood fibers used for the same purpose have fiber lengths in this range. For instance, Schmidt et al. teach using short cellulose fiber from wood, bagasse, bamboo, rice straw, wheat straw and Esparto grass with an average length of less than 2.0 mm (abstract and claim 6) to improve the strength of reconstitute tobacco sheets. These are the same type of sheet as disclosed by Baggett, Jr. It would have been obvious to one of ordinary skill in the art at the time of invention to use the wood fiber of Schmidt et al. as the wood fiber disclosed by Baggett Jr. et al. to improve the strength of the base web as disclosed by both Schmidt et al. and Baggett, Jr. et al. Doing so would produce a strong substrate because the fiber taught by Schmidt et al. is used because it produces a substrate with enhanced tensile strength and tear resistance (claim 4).
Baggett also discloses that the tobacco material is present in amounts that are preferable 3 or 4 times the amount of the base material. Therefore, the range of 5-20% of the tobacco material represents a range from 2.6% to 15% of the entire product is aerosol precursor when the tobacco material is present as 3 or 4 parts to 1 part base material (i.e. 3 or 4 times the base material).
Regarding claim 16, Baggett et al. disclose that pectin is used to prevent the tobacco material from penetrate the base web, but also disclose that, “Too much pectin hampers penetration, and weakens the bond between the tobacco material 70 and the base web 68,” (col. 12, 44-55). Therefore, the tobacco material of Baggett et al. partially penetrates (i.e. impregnates) the base web.
Regarding claim 17, Baggett et al. disclose that, “The tobacco web preferably comprises a nonwoven tobacco base web and a layer of tobacco material located along at least one side of the tobacco base web,” (Col. 4, 1-4). This implies that the tobacco material can be located along both sides of the tobacco base web of Baggett et al. because “at least one” implies that more than one side can be used and a web inherently has only two sides. It would have been obvious to one of ordinary skill in the art at the time of invention/filing to locate the tobacco material on two sides of the base web (i.e. the top and bottom).
Regarding claim 19, Baggett et al. disclose that, “The tobacco material 70 is preferably applied to the base web 68 at dry weight levels of at least twice and more preferably about three to four times that of the base web 68,” (col. 12, 21-33). In terms of percentages, this would result in 66%-80%, which anticipates the claimed range of 40-80%.
Regarding claim 20, Baggett et al. disclose a moisture content of 8.5-12% (claim 1).
Regarding claim 21, Baggett et al. disclose that the ratio of tobacco to wood fiber is 2:1 to 4:1, representing 20%-33% wood fiber in the web (col. 12, 1-13). In light of the disclosure that the web represents 20-33% of the dry weight (see the rejection of claim 19 above), approximately 6%-10% of the final product is wood fiber.
Regarding claim 22, Baggett et al. do not expressly disclose the thickness of the reconstituted tobacco sheet. However, Schmidt et al. disclose a similar reconstituted tobacco which uses wood fiber as a reinforcement has a thickness of 5-7 mils (127-177 micrometers). It would have been obvious to one of ordinary skill in the art at the time of invention to form the tobacco sheet of Baggett et al. with a thickness of 127-177 micrometers.
Regarding claim 23, Baggett et al. disclose that the web is formed on a fourdrinier wire of a web forming machine (col. 13, 30-36). It is notoriously well known in the art that fourdrinier machines are available in different sizes to form a wide variety of paper webs. It would have been obvious to one of ordinary skill in the art at the time of invention to use commercially available fourdrinier wire paper making machines to produce any width of web. For example, there are laboratory scale fourdrinier machines that produce paper 10s of mm wide and foudrinier machines that produce paper for newspaper printing multiple meters in width. It is notoriously well known that reconstituted tobacco webs are cut to size from larger sized sheets for their end use. In the case of Baggett et al. the entire tobacco sheet is wound on a bobbin, “with web winding machines readily known and available to one of ordinary skill in the art of web processing,” and then, “slit into individual bobbins 66b wherein the cut-width for each bobbin is respective of the desired circumference of the cigarette,” (col. 16, 20-26).
Alternatively, it would have been obvious to one of ordinary skill int eh art at the time of invention/filing to form multiple final cut-width bobbins of the circumference necessary for the smoking article as disclosed by Baggett et al (see above). Baggett et al. disclose that the diameter of the smoking article is between 7.5 to 8.5 mm (circumference of 23.6 to 29.8 mm). Therefore, the production of two bobbins would necessitate a web of at least 60 mm. It would have been obvious to one of ordinary skill in the art to duplicate the number of bobbins produced to 10 bobbins, resulting in 600 mm (i.e. 0.6 meters) of web. It has been held that mere duplication of essential working parts of a device involves only routine skill in the art. (MPEP 2144.04 (V)(B)). It would have been obvious to one of ordinary skill to increase the number of bobbins produced to match the demand for the bobbins.
Allowable Subject Matter
Claims 38 and 39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not disclose a substrate sheet with fibers having a mean fibre length between 1 and 5 mm where the fibers are woven or braided.
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 MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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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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/Michael J Felton/Primary Examiner, Art Unit 1747
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