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 .
Response to Arguments
Applicant’s arguments, see pages 7-8, filed 10 February 2026, with respect to the claim objections have been fully considered and are not persuasive. The Applicant has incorporated previously indicated allowable subject matter into the independent claims.
However, upon further consideration and a thorough analysis of the prior art the amount of water that could be in the humectant gel (pre-hydrated binder) is made obvious by Keritsis. Keritsis teaches the pre-moistened binder is about 2 to about 40 wt% cellulosic binder. The binder is blended with a dry blended containing about 5 to about 98 wt % tobacco to form a product for extrusion that contains about 15 to about 50% water.(cl 3 ln 20-30) Since Keritsis teaches that the pre-moistened binder is about 2 to about 40 wt % cellulosic binder, it would be obvious to conclude that the remaining 60 to 98% of the pre-moistened binder could be water as no other materials are readily discussed. The binder material would need to have a higher moisture content than 50% to achieve a product, when blended with the dry mixture, that has a final moisture content of the 50% water. Keritsis teaches that the binder material is pre-mixed with water to activate the adhesive characteristics.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Egri (US 3894544) and further in view of Mua, et al (US20110220130A1), Keritsis, et al (US4625737A) and Graves, et al (US4880018A) .
Regarding claim 1, Egri teaches a process (method) for producing a tobacco (vegetable) substance that includes:
A grinding device/ mill to reduce the tobacco material to a particulate size of 150-200 μm (cl 1 ln 53-55) and a separate system that adds both tobacco and materials including binders, softeners, and burn promoters to the tobacco as it enters a kneading device. (cl 5 ln 60-63)
The tobacco material is fed into a kneading machine (mixer) where it is mixed with additives (binders, softeners, burn promoters, etc.) (cl 5 ln 58-63) to form a dough-like tobacco mass (pasty compound) (cl 6 ln 8-9)
The kneaded mass is extruded (cl 6 ln 14)
The extruded material is reduced in size (cut) to form pieces/portions of tobacco material that have the dimensions of 3mm by 5 mm. (cl 6 ln 15-16)
The tobacco pieces/portions are then compressed (rolled) by being passed through a spreading belt (cl 6 ln 27-29). However, Egri teaches that the flakes formed would be irregularly waved (cl 4 ln 66-67)
Once the pasty material is rolled out the rolled portions are dried to bring the material to a desired final moisture content. (cl 6 ln 46-47)
Egri teaches that the tobacco is pre-moistened before and then mixed with various material in the kneading machine (cl 5 ln 60-63) including glycerin, a known humectant, as well as binders like carboxymethyl cellulose to form the paste mixture. However, Egri that the humectant and binder are added separately to the pre-moistened tobacco material in the kneading process and not mixed to form a humectant gel.
Mua, directed to the method of making tobacco, teaches that the binder system that incorporate a material that acts as a plasticizer, such as glycerin [0031], with other binders such as carboxymethyl cellulose.[0036] These plasticizers facilitate hydration as well.[0032] Mua teaches that the tobacco is added to the binder system with any other desired ingredients to form the mixture into a desired shape. (Abstract)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri by using binder material as taught by Mua because both Egri and Mua are directed to extruded tobacco material, Mua teaches this allows for low amounts of binding agents to be used and low to moderate amounts of liquid processing aids (Abstract), and this involves using a known technique to improve similar devices method of making in the same way.
Egri and Mua are silent as to the water content of the tobacco paste/blend.
Keritsis teaches cellulosic binder that is blended with tobacco particles as well as the amount of water, considered the processing liquid, needed to allow that material to be kneaded and then extruded. The blend of the tobacco particles and the humectant gel (pre-moistened binder) contains between 15-50% water. (cl 7 ln 46) Keritsis teaches the pre-moistened binder is about 2 to about 40 wt% cellulosic binder. The binder is blended with a dry blended containing about 5 to about 98 wt % tobacco to form a product for extrusion that contains about 15 to about 50% water.(cl 3 ln 20-30) Since Keritsis teaches that the pre-moistened binder is about 2 to about 40 wt % cellulosic binder, it would be obvious to conclude that the remaining 60 to 98% of the pre-moistened binder could be water as no other materials are readily discussed. The binder material would need to have a higher moisture content than 50% to achieve a product, when blended with the dry mixture, that has a final moisture content of the 50% water. Thus, the claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri and Mua to premix the binder (humectant-gel) with water as taught by Keritsis because Egri, Mua, and Keritsis are directed to extruded tobacco material, Keritsis teaches premixing the binder material allows the adhesive characteristic of the binder to be activated (cl 4 ln 14-16), and this involves using a known technique to improve a similar method of making a product in the same way.
Further, Keritsis teaches that if the water amount in the material to be extruded is below 15% the shear from the extrusion process causes the produce surface to become rough and if the water is in excess of 50% insufficient energy is supplied to create the formation as the product exits the extruder. (cl 8 ln 45-56) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Keritsis further teaches that the extruded material is dried to form a finished product having a water content of between 5 wt % and 20 wt % water.(cl 7 ln 62-63) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Based on the teachings of Keritsis, it would be reasonable to conclude that the extrudate would have a lower water content than the tobacco mixture before the extruding process the water content would still be in the range of 15-50%. A person having ordinary skill in the art would recognize that if the tobacco extrudate were to have a water content less than the between 5% and 20% water the drying step would be unnecessary.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri and Mua to use the moisture content of the material to extrude that is taught by Keritsis because Egri, Mua, and Keritsis are directed to extruded tobacco material, Keritsis teaches too little water can create sheer resulting in a less than desirable product and too much water can result in insufficient energy being supplied to form the product (cl 8 ln 47-56), and this involves using a known technique to improve similar devices method of making in the same way.
Neither Egri nor Keritsis teach the rolling device would produce strips of a predetermined thickness.
Graves, directed to the process of making extruded tobacco material, teaches that the sheet is padded between pressure rollers to reduce the thickness of the extruded material. (cl 8 ln 57-60) The sheet can then be cut into strands or shreds. (cl 9 ln 1-9)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri and Keritsis by using pressure rollers to obtain a consistent thickness of the sheet as taught by Graves because Egri, Keritsis, and Graves are directed to extruded tobacco material, Graves teaches this makes a product that is comparable in shape and structural strength to tobacco cut filler (cl 9 ln 13-15), and this involves using a known technique to improve similar devices method of making in the same way.
Regarding claim 3, Egri teaches that the tobacco is milled using a hammer mill to have a particle diameter of 150-200 µm. (cl 1 ln 54-55) The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claims 4 and 6, Keritsis teaches the water content of the ground tobacco material is between 3% to 20% (cl 3 ln 55-56). These ranges, as taught by Keritsis, overlap the ranges of the instant claim, and therefore the instant claim is prima facie obvious. See MPEPE 2144.05.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri to use the moisture content of the pre-moistened binder as taught by Keritsis because both Egri and Keritsis are directed to extruded tobacco material, Keritsis teaches by prehydrating the binder a lesser amount of binder is needed which improves the economical factors and improves the quality factors of the smoking article (cl 8 ln 12-15), and this involves using a known technique to improve similar devices method of making in the same way.
Regarding claim 5, As discussed in claim 1, Mua teaches that these materials can be premixed to form a viscous material. Mua teaches that the binder system has a viscosity of the plasticizer blend is often at least 1500cP. [0038] The claimed range overlaps the range disclosed by the prior art and is therefore considered prima facie obvious. See MPEP 2144.05
Regarding claim 7, Egri teaches that carboxymethyl cellulose is a binder known in the art. (cl 4 ln 13-14)
Keritsis teaches that the cellulosic binder can be carboxymethyl cellulose (cl 4 ln 65) or guar or guar derivatives (cl 5 ln 5).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri by selecting possible binders as taught by Keritsis because both Egri and Keritsis are directed to extruded tobacco material, Keritsis teaches that these components have an adhesive properties (cl 3 ln 60), and this involves using known binders to adhere tobacco particle to form a agglomerated material to improve the method of manufacturing the tobacco material in the same way.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Egri (US 3894544), Keritsis, et al (US4625737A), and Graves, et al (US4880018A) as applied to claim 1 above, and further in view of Klipfel, et al (US20170273346A1) .
Regarding claim 2, The prior art is silent to adding vegetable fibers to the ground tobacco material.
Klipfel, directed to the method of producing homogenized tobacco materials, teaches cellulose pulp is added to the ground blend of tobacco powder. [0041] Klipfel provides a list of possible fiber materials that can be added to the tobacco material which includes vegetable fibers. [0042-0043]
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri and Keritsis by adding the vegetable material to the ground tobacco as taught by Klipfel because Egri, Keritsis, and Klipfel are directed to extruded tobacco material, Klipfel teaches the fiber particles may be selected based on the desire to produce a sufficient tensile strength for the cast leaf [0043], and this involves using a known technique to improve similar devices method of making in the same way.
Claims 9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Egri (US 3894544), Keritsis, et al (US4625737A), and Graves, et al (US4880018A) as applied to claim 1 above, and further in view of Rosado (US20180332884A1).
Regarding claim 9, Egri, as modified by Mua, Keritsis, and Graves, teaches that the process includes a step of rolling an extruded dough between two rollers to reduce the thickness of the extruded material. However, the prior art is silent with respect to winding the material.
Rosado, directed to a tobacco sheet production line, teaches the production line has a winding station located downstream of the production portion of the line and to wind at least one of the portioned homogenized tobacco sheets in a bobbin. [0007] Rosado teaches that the sheet has a dimension perpendicular to the transport direction [0023] and that once the sheet passes through the slitter each sheet has a width that is sent to the winding station, [0040-0041]. The winding station also has a sensor that measures the dimension of the diameter of the bobbin. When the limit is reaches the sensor can send a signal to a cutting unit to cut the web so that the bobbin can be changed.[0151] The ability to set the width of the tobacco web sheets and the sensor that measures the diameter of the coil is considered to read on the limitation of the coil having predetermined dimensions.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri, Mua, Keritsis, and Graves by using a slitter and winding station as taught by Rosado because Mua, Keritsis, Graves, and Rosado are directed to extruded tobacco material, Rosado teaches the use of smaller bobbins are easier to store and allow the process to operate at faster speeds [0008], and this involves using a known technique to improve similar devices method of making in the same way.
Regarding claim 11, Rosado teaches that after the tobacco sheet is cast/ formed it is transported downstream to a slitter where the web is divided longitudinally into parallel sections. [0025] The slitter is comprised of between 2 and 10 blades so that the number of homogenized tobacco sheets formed in the process is between 3 and 11. [0040] The production line continues once the sheets are divided to the winding station, containing 3 to 11 winding units [0042], where each portion of the homogenized tobacco sheet is wound on different bobbins. [0043]
Regarding claim 12, Rosado teaches that the method comprises transporting at least three portioned tobacco sheets in parallel towards respective winding units of a winding station and that the winding of the bobbins takes place at the winding station (hub). [0047] The three tobacco sheets are transported parallel to one another to the winding station and as such it would be reasonable to conclude that the individual bobbins that receive the sheet would be sided by side.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Egri (US 3894544), Keritsis, et al (US4625737A), Graves, et al (US4880018A), and Rosado (US20180332884A1) as applied to claim 9 above, and further in view of Wurzburg, et al (US3098492A).
Regarding claim 10, Rosado teaches cutting the sheet into standard widths that are less than the width of the formed sheet. However, Rosado does not suggest a step of trimming the sheet after the sheet is extruded, rolled, and dried to form a single sheet.
Wurzburg, directed to a method of making a tobacco product, teaches that after the sheet is extruded, and rolled into a sheet between two rollers, dried, and the material may then be trimmed and wound onto a spool. (cl 5 ln 12-27)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Egri, Keritsis, and Rosado by trimming the sheet before it moves to the slitter as taught by Wurzburg because Egri, Keritsis, Rosado, Wurzburg are directed to extruded tobacco material, Wurzburg teaches this allows for the material to be readily handled (cl5 ln 29), and this involves using a known technique to improve similar devices method of making in the same way.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA R BIEGER whose telephone number is (703)756-1014. The examiner can normally be reached M-Th: 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Louie can be reached at (571)270-1241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.R.B./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755