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 Amendment
This office action is in response to the Applicants’ arguments/remarks filed 4/06/2026.
No claims are amended.
Claims 1-4, 6-9, 11, 14, 16-18, 20, 22, 24, 26, and 45-54 are currently examined.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4, 6-9, 11, 14, 16-18, 20, 22, 24, 26, 36-37, 41-43, and 45-54 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “intermittently contacting” in claim 1 lines 6-7 is commonly understood to mean an object moves in and out of contact with the surface. The claim uses it to mean a fluid or slurry is moving within a defined container, but has some portion of the fluid always in contact with the side of the container. (See instant FIG 2 and page 39 and 40). Intermittent heating is therefore interpreted to include constant heating wherein some portion of the fluid or slurry is always in contact with a heated surface which is consistent with FIG 2 and the instant specification. Claims 2-4, 6-9, 11, 14, 16-18, 20, 22, 24, 26, 36-37, 41-43, and 45-54 are rejected for their dependence on claim 1.
Regarding Claim 2, a first statement of a range or limitation together with a second statement of a range or limitation that falls within or overlaps with the first statement of a range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites first statement of a range or limitation “the initial combination of stem and lamina comprises from at least about 5% lamina up to about 99% lamina, by weight”, and the claim also recites a second statement of a range or limitation “from at least about 1% stem up to about 95% stem, by weight”, which is the alternate statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such language of second statement of a range or limitation is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of compact prosecution the claim is interpreted to require any combination of both ranges.
Regarding Claim 18, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation wherein the fill value of the treated tobacco is at least about 5%, and the claim also recites wherein the fill value of the treated tobacco is at least about 15% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding Claim 46, a first statement of a range or limitation together with a second statement of a range or limitation that falls within or overlaps with the first statement of a range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 46 recites first statement of a range or limitation “the heated surface has a temperature of from at least about 120°C to about 250°C prior to contact with the tobacco material,”, and the claim also recites a second statement of a range or limitation “from at least about 150°C to about 300°C prior to contact with the tobacco material”, which is the alternate statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such language of second statement of a range or limitation is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-4, 7-9, 14, 16-18, 26, 45-47, 50, and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US20140318554A1), cited by applicant in IDS submitted 8-15-2022, in view of Rowell (US 3906961), and as evidenced by Merriam-Webster (https://www.merriam-webster.com/dictionary/sear).
Regarding Claim 1, Hoffman teaches a method of treating tobacco material comprising:
combining pre-expanded stem with lamina to form an initial combination of stem and lamina ([0021], the expanded tobacco stems can be conveniently treated together with the lamina);
cutting the initial combination of stem and lamina ([0027]);
expanding the combination of stem and lamina ([0031]) and
Hoffman discloses heating [0031] and discloses the slurry mixture tumbling in a rotating drum [0026] while being heated at a preferred temp of between 150 °C and 400 °C [0031] and it would be understood by an ordinary artisan that the slurry is coming into intermittent contact with the walls of the drum and that the tobacco material is heated to produce a treated tobacco material. [0031]
However, Hoffman fails to explicitly disclose the walls of the drum are additionally heated such that the heated surface heats the tobacco material.
However Rowell teaches a similar tobacco processing device with a drying drum and teaches the exterior of the drum can be heated with a heater (86) to provide a suitable structure for applying steam heat to tobacco for suitably drying tobacco (see FIG 1 and column 5 lines 30-40, regarding heat transferred into tobacco from drum surface, see column 6 lines 29-45).
Therefore, it would be obvious to a person of ordinary skill in the art to modify the method of Hoffman with the method of Rowell by additionally regulating the heating of the drum by heating the exterior surface of the drying drum for suitably drying the tobacco to allow the moisture content of the tobacco to be controlled without seriously affecting the evaporation loading conditions of the device. (column 6 lines 42-46).
Merriam-Webster defines “sear” as to cook the surface of quickly with intense heat. Water is well known to boil at around 100 °C and the temperature range of the heating process of Hoffman occurs at between 150 °C and 400 °C. A person of ordinary skill in the art would appreciate that plant material heated in a rotating drum with superheated steam running through it is contacting the expanded combination of stem and lamina with a heated surface so that the tobacco material is seared to produce a treated tobacco material as the tobacco material would be cooked quickly with intense heat. Moreover, the material touching the surface of the drum which is heated as modified by Rowell would also be cooked quickly with an intense heat. Thus, one of ordinary skill in the art would recognize that the heating in a drum of modified Hoffman is a searing process.
Regarding Claim 2, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the initial combination of stem and lamina comprises from at least about 5% lamina up to about 99% lamina ([0043], 5% to about 100% by weight tobacco stems the remainder being lamina, which falls in and overlaps with the claimed range, and is consistent with the interpretation above. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I)).
Regarding Claim 3, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the expanded combination of stem and lamina is agitated so that it is intermittently in contact with the heated surface, see example in paragraphs [0047] – [0053], the expanded combination of stem and lamina is agitated in the rotating drum, which is rotated continuously to move the stems and lamina through the heated gas and surfaces of the drum [0048], a person of ordinary skill in the art would recognize that this expanded combination of stem and lamina is agitated so that it is intermittently in contact with the heated surface.
Regarding Claim 4, modified Hoffman teaches the claim limitations as set forth above. Hoffman teaches the suitable heating temperature is between 150 °C and 400 °C [0031], which overlaps with the claimed range the heated surface has a temperature of from at least about 100 °C to about 300 °C. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Regarding Claim 7, modified Hoffman teaches the claim limitations as set forth above. Additionally, modified Hoffman teaches the heated metal drum surface is used for heating the tobacco as set forth above. (see rejection of claim 1)
Regarding Claim 8, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the moisture content is around 3% oven volatiles, [0025], which falls within the claimed range the treated tobacco material has a moisture content from 0 to about 10% oven volatiles (OV).
Regarding Claim 9, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the expanded combination of stem and lamina has a moisture content of 10 – 11 percent before it is intermittently contacted with a heated surface, see [0024]. (the surface being the heated searing drum surface as set forth above as modified by Benz) Which falls within the claimed range the moisture content is at least 5% OV before it is intermittently contacted with a heated surface.
Regarding Claim 14, Modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches ([0026] contacted with steam while being contacted with a heated surface, moisture increased from 10-11% to 12-20% from conditioning [0024]), which meets the claimed limitation at least one of water and steam is added to the expanded combination of stem and lamina whilst it is intermittently contacted with a heated surface, to increase its moisture content
Regarding Claim 17, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the expanded combination of stem and lamina is agitated by a rotating drum [0048].
Regarding Claim 18, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the fill value of the treated tobacco is at least about 5% or at least about 15% greater than the fill value of the combination of stem and lamina immediately prior to the step of intermittently contacting the expanded combination of stem and lamina with a heated surface, specifically see [0032], Hoffman teaches the filling power or fill volume of the tobacco material after processing increases the volume of that material by 50-100%, which meets the claimed range [0032]. It would be obvious to a person of ordinary skill in the art that this value is met just prior to contacting the heated surface upon exposure to the steam.
Regarding Claim 26, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the cut combination of stem and lamina is expanded by exposing the cut stem and lamina to an expansion agent ([0018], liquid carbon dioxide expansion agent).
Regarding Claim 45, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the expanded combination of stem and lamina has a moisture content of from about 12 to about 16% OV before it is intermittently contacted with a heated surface (drum surfaces would have a surface above ambient temperature with the steam).
Specifically, Hoffman teaches moisture content of “around 10-11%” before conditioning (intermittent contact with a heated surface), see [0024]. Although this is just below the claimed range of about 12-16% it would be obvious to a person of ordinary skill in the art that the lower range of about 12% is very close to the upper range of around 10-11%, as taught by Hoffman. The Courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05 (I).
Regarding Claim 46, Modified Hoffman teaches the claim limitations as set forth above. Specifically, Hoffman teaches a temperature prior to contact with the tobacco material of between 150 °C and 400 °C [0031] (an ordinary artisan would appreciate steam transfers heat to the metal drum) which overlaps with the claimed temperature of from about 120°C to about 250°C prior to contact with the tobacco material, or from at least about 150°C to about 300°C prior to contact with the tobacco material which are steam heated between 150 °C and 400 °C [0031], an ordinary artisan would appreciate this temperature is met prior to contact with the tobacco material.
Regarding Claim 47, Hoffman teaches moisture content of “around 10-11%” before conditioning (intermittent contact with a heated surface), see [0024], which falls within the claimed range of from about 5% to about 25% OV before it is intermittently contacted with a heated surface.
Regarding Claim 50, modified Hoffman teaches the claim limitations as set forth above. Specifically, Hoffman teaches the filling power or fill volume of the tobacco material after processing increases the volume of that material by about 50-100% [0032], which overlaps the claimed range the fill value of the treated tobacco is from about 30% to about 50% greater than the fill value of the initial combination of stem and lamina. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
Hoffman teaches about 50% and a lower boundary of “about 50%” given -10% variance (on account of the usage of the term about) gives a lower bound of 45%. E.g., Hoffman’s teaching of the fill value of the treated tobacco is from 45%- 100% which overlaps with the claimed fill value of from about 30-50% as explained above [0032] and therefore a case of prima facie obviousness exists.
Regarding Claim 53, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the expansion agent is liquid carbon dioxide expansion agent [0018].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US20140318554A1), cited by applicant in IDS submitted 8-15-2022, Rowell (US 3906961), and as evidenced by Merriam-Webster (https://www.merriam-webster.com/dictionary/sear), as applied to claim 1 above, and further in view of Osborne (US 4150677A).
Regarding Claim 6, modified Hoffman teaches the claim limitations as set forth above.
Modified Hoffman teaches the tobacco is heated by the drum surface as set forth above, however Hoffman and Rowell are silent to suitable temperatures to which the tobacco itself is heated and therefore fails to teach contacting the expanded combination of stem and lamina with the heated surface heats the tobacco material to a peak temperature of from about 120°C to about 230°C.
However, Osborne teaches methods for processing and treating tobacco and teaches suitable temperatures to which tobacco should be heated, and teaches that during heating the tobacco should reach a suitable peak temperature of between 140 and 180 degrees C (column 4 lines 35-36). Osborne further teaches that the use of this process can bring the tobacco to a desirable level of flavor (column 5 line 54).
It would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the method of Hoffman to heat the tobacco to a temperature of between 140 and 180 degrees C in order to bring the tobacco to a desirable level of flavor as taught by Osborne, which falls within the claimed range.
Claims 11, 16, and 48-49, is rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US20140318554A1), cited by applicant in IDS submitted 8-15-2022, in view of Rowell (US 3906961), and as evidenced by Merriam-Webster (https://www.merriam-webster.com/dictionary/sear), as applied to claim 1 above, and further in view of Ulbrich (EP0481110A1).
Regarding Claim 11, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the expanded combination of stem and lamina is intermittently contacted with a heated surface while being rotated, agitated, and heated with steam in a drum as set forth above in claim 1.
However, Hoffman is silent to a suitable duration of the time that the expanded combination is intermittently contacted with the heated surface of the drum, and therefore fails to disclose heating for a period of from at least about 1 minute to about 15 minutes.
Ulbrich teaches a similar drum as Hoffman for heating tobacco (see FIG 1) and teaches a suitable internal passage time of approximately 9 minutes (column 2 line 29) and teaches this allows the product to reach a certain desirable uniformity and stability. (column 2 lines 36-37). Therefore, it would be obvious to modify the duration of time that the expanded combination of stem and lamina is intermittently contacted with a heated surface for a period of 9 minutes as taught by Ulbrich to reach a certain desirable uniformity and stability, which falls within the claimed range of 1 minute to about 15 minutes.
Regarding Claim 16, modified Hoffman teaches the claim limitations as set forth above. However, Hoffman does not explicitly disclose the method is a continuous process.
However, Ulbrich teaches a similar drum for processing tobacco and teaches the process includes a continuous belt and conveyor through which the tobacco material passes continuously (See FIG 1, and column 1 lines 52-55) which advantageously is known to allow continuous production. Ulbrich teaches this continuous process allows the tobacco product to reach a certain desirable uniformity and stability (column 2 lines 36-37). Therefore, it would be obvious to a person of ordinary skill in the art to modify the process of Hoffman to be a continuous process as taught by Ulbrich to allow the tobacco product to reach a certain desireable uniformity and stability and to allow continuous production.
Regarding Claim 48, modified Hoffman teaches the claim limitations as set forth above. Specifically, Ulbrich teaches a similar drum as Hoffman for heating tobacco (see FIG 1) and teaches a suitable internal passage time of approximately 9 minutes (column 2 line 29) which falls within the claimed range of 2 minutes to about 10 minutes.
Claims 20 and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US20140318554A1), cited by applicant in IDS submitted 8-15-2022, in view of Rowell (US 3906961), and as evidenced by Merriam-Webster (https://www.merriam-webster.com/dictionary/sear) as applied to claim 1 above, and in view of Benjak (US20160270435A1).
Regarding Claim 20 and 51, modified Hoffman teaches the claim limitations as set forth above. However, Hoffman is silent to the change in sugar content following treatment.
Specifically, Benjak teaches the sugar content undergoes a sugar content reduction that is 64% less than the sugar content of the initial combination of stem and lamina (see page 8 table 4, total sugars had a reduction of 64.0%). Which falls in the claimed ranges of (C20) the claimed range of the sugar content of the treated tobacco is from about 20% to about 95% less than the sugar content of the initial combination of stem and lamina, and (C51) the sugar content of the treated tobacco is from about 60% to about 90% less than the sugar content of the initial combination of stem and lamina.
Benjak also teaches that methods of tobacco treatment that increase the products of the Maillard reaction contribute to desirable organoleptic properties of the treated tobacco product [0030]. Therefore, a person of ordinary skill in the art would have been motivated to modify the teachings of modified Hoffman, with Benjak in order to give the treated tobacco, products of the Maillard reaction resulting from the method of Benjak which contribute to desirable organoleptic properties of the treated tobacco product [0030].
Claims 22, 24 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US20140318554A1), cited by applicant in IDS submitted 8-15-2022, in view of Rowell (US 3906961), and as evidenced by Merriam-Webster (https://www.merriam-webster.com/dictionary/sear) as applied to claim 1 above, and in view of Sunas (US4827949A).
Regarding Claim 22, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the tobacco composition includes stem and lamina.
However, Hoffman is silent to the reduction in nicotine concentration and therefore fails to explicitly disclose the nicotine content of the treated tobacco is from about 10% to about 80% less that the nicotine content of the initial combination of stem and lamina.
However, Sunas teaches an accelerated aging treatment of tobacco material involving the Maillard reaction (column 5 lines 52-57) wherein the nicotine content of the treated tobacco composition is reduced by 15% (table II column 5) from the nicotine content of the tobacco composition before treatment which falls within the range from about 10% to about 80% less that the nicotine content of the initial tobacco composition. Sunas also teaches this method is beneficial because it results in an increase in soluble acids in the treated tobacco composition which imparts flavor and aroma to the smoke which are substantially increased by the method of Sunas (see column 5 lines 52-54).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the method of Hoffman to process the tobacco by doing the Maillard process as taught by Sunas to the tobacco material resulting in a reduced nicotine content of the tobacco composition of 15% as taught by Sunas, in order to result in an increase in soluble acids in the treated tobacco composition which imparts flavor and aroma to the smoke which are substantially increased by the method of Sunas. (see column 5 lines 52-54).
Regarding Claim 24, modified Hoffman teaches the claim limitations as set forth above. Additionally, Hoffman teaches the tobacco composition includes stem and lamina.
However, Hoffman is silent to the ammonia content change of the tobacco composition following treatment and thus fails to explicitly disclose the ammonia content of the treated tobacco is from about 30% to about 99% less that the ammonia content of the initial combination of stem and lamina.
However, Sunas teaches the ammonia content of the treated tobacco composition is reduced by 45% (table II column 5) from the ammonia content of the tobacco composition before treatment which falls within the range the ammonia content of the treated tobacco is from about 30% to about 99% less that the ammonia content of the initial tobacco composition.
Sunas also teaches this method is beneficial because it results in an increase in soluble acids in the treated tobacco composition which imparts flavor and aroma to the smoke which are substantially increased by the method of Sunas (see column 5 lines 52-54).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the method of Hoffman to process the tobacco material by doing the accelerated aging Maillard process as taught by Sunas (column 5 lines 47-60) to the tobacco material to have a reduced ammonia content as taught by Sunas, in order to result in an increase in soluble acids in the treated tobacco composition which imparts flavor and aroma to the smoke which are substantially increased by the method of Sunas. (see column 5 lines 52-54).
Regarding Claim 52, modified Hoffman teaches the claim limitations as set forth above. Additionally, the ammonia content of the treated tobacco is from about 50% to about 90% less than the ammonia content of the initial combination of stem and lamina. E.g., see Table IIA on columns 5/6 Run IV shows a 58% decrease in the ammonia content of the treated tobacco which falls within the claimed range of about 50% to about 90% than the ammonia content of the initial combination of stem and lamina (e.g., before vs after).
Sunas also teaches this method is beneficial because it results in an increase in soluble acids in the treated tobacco composition which imparts flavor and aroma to the smoke which are substantially increased by the method of Sunas (see column 5 lines 52-54).
It would have been obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the method of Hoffman to process the tobacco material by doing the accelerated aging Maillard process as taught by Sunas (column 5 lines 47-60) to have a reduced ammonia content as taught by Sunas, in order to result in an increase in soluble acids in the treated tobacco composition which imparts flavor and aroma to the smoke which are substantially increased by the method of Sunas. (see column 5 lines 52-54).
Claims 49, is rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US20140318554A1), cited by applicant in IDS submitted 8-15-2022, in view of Rowell (US 3906961), and as evidenced by Merriam-Webster (https://www.merriam-webster.com/dictionary/sear), and Ulbrich (EP0481110A1) as applied to claim 11 above, and further in view of Fowler (US 3905123)
Regarding Claim 49, modified Hoffman teaches the claim limitations as set forth above. Hoffman fails to explicitly disclose the expanded combination of stem and lamina is intermittently contacted with a heated surface for a period of from at least about two and a half minutes to about 5 minutes.
However, Fowler teaches a similar drum for drying processed tobacco stems and lamina (see column 10 lines 47-48) and teaches the time the tobacco is in the heated drum is about 5 minutes (see column 9 line 48) which allows the tobacco to reach desired moisture level (column 9 lines 41-48), which overlaps with the claimed range of the expanded combination of stem and lamina is intermittently contacted with a heated surface for a period of from at least about two and a half minutes to about 5 minutes. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists. See MPEP § 2144.05 (I).
It would be obvious to a person of ordinary skill in the art to modify the method of Hoffman with the process of Fowler which teaches the tobacco reaches the desired moisture level by being in the heated drum for about 5 minutes with a reasonable expectation of success.
Claim 54 is rejected under 35 U.S.C. 103 as being unpatentable over Hoffman (US20140318554A1), cited by applicant in IDS submitted 8-15-2022, in view of Rowell (US 3906961), and as evidenced by Merriam-Webster (https://www.merriam-webster.com/dictionary/sear), and in view of Sunas (US4827949A) as applied to claim 22 above, and further in view of Kiss (EP1980163A1) English machine translation relied upon.
Regarding Claim 54, modified Hoffman teaches the claim limitations as set forth above. However, Hoffman alone fails to teach the nicotine content of the treated tobacco is from about 35% to about 70% less than the nicotine content of the initial combination of stem and lamina.
However, Kiss teaches the nicotine content of the treated tobacco can be adjusted to any value as desired from 0.5 to 5.5 wt%. Kiss is silent to the starting nicotine concentration however Sunas teaches an initial nicotine wt% in Run 1 of 5.24. (See [0008]). Thus, selecting a final nicotine concentration adjustment in the middle of the range taught by Kiss of a reduction down to 2 wt% from the example nicotine concentration given by Sunas in Run 1 gives a change in nicotine content of about 62% which falls within the claimed range.
Kiss also teaches this adjustment is advantageous because not only can the nicotine be adjusted but the other additives such as odorants can be adjusted in order to give the tobacco desired flavors and properties. [0008]
It would be obvious for a person of ordinary skill in the art before the filing date of the claimed invention to modify the method of modified Hoffman with the teachings of Kiss in order to give the tobacco desired flavors and properties.
Response to Arguments
Applicants’ arguments and amendments filed 4-6-2026 with respect to the 35 USC 103 rejections of claims 1-4, 6-9, 11, 14, 16-18, 26, 45-50, and 53 have been fully considered and are not found persuasive. However, for clarity the rejection has been withdrawn and a new rejection is set forth above.
Applicant argues on page 10 of the remarks:
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These arguments are not found persuasive because in response to applicant's argument that the claimed method produces advantageous and desirable properties such as desirable organoleptic properties, increased fill value, and hiding the presence of stem material, and the tobacco undergoes a change in color to an attractive more uniform darker brown, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Additionally In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., desirable organoleptic properties, increased fill value, hiding the presence of the stem both visually and sensorially, the tobacco undergoes a change in color to an attractive and more uniform darker brown) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant Additionally Argues on page 10:
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This is not found persuasive because as explained above, Hoffman teaches searing as evidenced by Merriam-Webster; which defines “sear” as to cook the surface of quickly with intense heat. For example, water is well known to boil at around 100 °C and the temperature range of the heating process of Hoffman occurs at between 150 °C and 400 °C. A person of ordinary skill in the art would appreciate that plant material heated in a rotating drum with superheated steam running through it is contacting the expanded combination of stem and lamina with a heated surface so that the tobacco material is seared to produce a treated tobacco material as the tobacco material would be cooked quickly with intense heat. Moreover, the material touching the surface of the drum which is heated as modified by Rowell would also be cooked quickly with an intense heat. Thus, one of ordinary skill in the art would recognize that the heating in a drum of modified Hoffman is a searing process
Conclusion
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755
Prosecution Insights