DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8-26-2025 has been entered.
Response to Amendment
This office action is in response to the Applicants’ arguments/remarks filed 8/26/2025.
Claims 4, 9, 11, 18, 20, 24, and 26 are currently amended.
Claims 45-54 are newly added.
Claims 1-4, 6-9, 11, 14, 16-18, 20, 22, 24, 26, and 45-54 are currently examined.
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, 6-9, 11, 14, 16-18, 26, 45-50, 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 Robinson (US5007440A), and Benz (WO2006029713A1), English machine translation relied upon.
Regarding Claim 1, Hoffman teaches a method of treating tobacco material comprising:
combining pre-cut and/or pre-expanded stem with lamina to form an initial combination of stem and lamina ([0021], the tobacco stems can be conveniently treated together with the lamina);
cutting the initial combination of stem and lamina ([0021] cut lamina and stems are disclosed, the combination is disclosed as being processed together, it would be obvious to a person of ordinary skill in the art that this processing includes cutting);
expanding the combination of stem and lamina (the stems and lamina can be combined for conditioning which results in the expanded tobacco product, it would be obvious to a person of ordinary skill in the art that this conditioning includes expansion, in order for the combination and conditioning to result in expanded tobacco stems and lamina) and
Although intermittently contacting the mixture with a heated surface is also not explicitly disclosed by Hoffman, Robinson teaches the slurry should be dried on a heated metal surface preferably because conditions of airflow are minimized during drying operations (see column 5 lines 63-66). Therefore, it would be obvious to a person of ordinary skill in the art before the filing date of the claimed invention to modify the heating of Hoffman so that the slurry is dried on a heated metal surface to minimize airflow during drying operations, (column 5 lines 63-66).
Hoffman and Robison fail to explicitly disclose the tobacco material is seared or scorched; however, Benz teaches that after processing, the tobacco material should undergo a step of searing (page 2 first paragraph) and that this method of treatment of Benz which includes searing is beneficial because the resulting treated tobacco product is soft and subtle and ensures a very good release effect (page 2 paragraph 8).
Therefore, it would be obvious to modify the method of Hoffman to include searing taught by Benz in order for the treated tobacco material to be soft and subtle and ensure a very good release effect.
Regarding Claim 2, 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, 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)), and/or
from at least about 1% stem up to about 95% stem ([0043], 5% to about 100% by weight tobacco stems the remainder being lamina, which falls in and overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by prior art” a prima facie case of obviousness exists.)
Regarding Claim 3, 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, Hoffman teaches the claim limitations as set forth above. Hoffman teaches the heated surface (the hot gas) has a temperature prior to contact with the tobacco material of between 150 °C and 400 °C [0031], which overlaps within 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).
prior to contact with the tobacco material (it would be understood the hot gas/steam has its temperature prior to contact with the tobacco material.)
Robinson teaches an expanded tobacco material that can be heated on a heated metal surface (page 5 lines 60-65), and further teaches that tobacco material can be volume expanded or puffed tobacco material (page 6 lines 53-59).
Regarding Claim 6, modified Hoffman teaches the claim limitations as set forth above. Although Hoffman fails to explicitly disclose the temperature of the tobacco material, Hoffman teaches a temperature of the heating surface prior to contact with the tobacco material of between 150 °C and 400 °C [0031]). It would be obvious to a person of ordinary skill in the art to modify the method of Hoffman such that a surface temperature of the tobacco material reaches a peak temperature from about 120 °C to about 230 °C as an obvious result of the tobacco material coming into contact with the heated surfaces which are preheated to between 150 °C and 400 °C [0031], and further it would be obvious to a person of ordinary skill in the art to remove the tobacco from the heated surface before the tobacco burns or reaches the temperature of the surface resulting in the tobacco material that has been heated to a peak temperature of from about 120 °C to about 230 °C, with a reasonable expectation of success.
Regarding Claim 7, Additionally, Robinson teaches the heated surface is a heated metal surface (page 5 lines 60-65, see rejection claim 1 above).
Regarding Claim 8, 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, 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]. 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 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 the duration of time and thus fails to explicitly disclose a suitable duration of the time period for heating (and rotating and agitating) for a period of from at least about 1 minute to about 15 minutes.
However, Robinson teaches the suitable duration of time needed for the processing and agitation of the tobacco composition is normally about 10 to 30 minutes (see column 5 lines 20-23), which overlaps with the claimed period of from at least about 1 minute to about 15 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).
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 16, Specifically, Hoffman teaches the drum is rotated to continuously move the tobacco stems and lamina [0048].
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. 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).
Terms modifying ranges such as “about” and “around” are reasonably interpreted to include +/- 10% of the numeric value of the number being modified. Thus, including a 10% variance, “about 12-16%” as claimed would include a range of 10.8-17.6%, which overlaps with Hoffmans teaching of around 11-12%. Also, applying this to Hoffmans teaching of “around 11-12%” includes the range of 9.9%-13.2% which also overlaps with the claimed range. 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 46, Modified Hoffman teaches the claim limitations as set forth above. Specifically, as set forth above, Hoffman teaches a temperature of the heating surface prior to contact with the tobacco material of between 150 °C and 400 °C [0031]). It would be obvious to a person of ordinary skill in the art to modify the method of Hoffman such that a surface temperature of the tobacco material reaches a peak temperature from about 120 °C to about 230 °C as an obvious result of the tobacco material coming into contact with the heated surfaces which are preheated to between 150 °C and 400 °C [0031], and further it would be obvious to a person of ordinary skill in the art to remove the tobacco from the heated surface before the tobacco burns or reaches the temperature of the surface resulting in the tobacco material that has been heated to a peak 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.
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 48, modified Hoffman teaches the claim limitations as set forth above. Specifically, Robinson teaches the suitable duration of time needed for the processing and agitation of the tobacco composition is normally about 10 to 30 minutes (see column 5 lines 20-23), which overlaps with the claimed period of from at least about 2 minutes to about 10 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).
Regarding Claim 49, modified Hoffman teaches the claim limitations as set forth above. Robinson teaches the expanded combination of stem and lamina is intermittently contacted with a heated surface (agitated) for a period of about 5 minutes to 2 hours, (see column 5 lines 20-23), 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).
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 selected from the group consisting of: liquid carbon dioxide, solid carbon dioxide, steam, liquid nitrogen, liquid short (C5 or C6) chain carbohydrates, or mixtures thereof. ([0018], liquid carbon dioxide expansion agent).
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, and Robinson (US5007440A) 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, and Robinson (US5007440A) 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 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 have a reduced nicotine content of the tobacco composition after treatment by 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 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 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).
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, Robinson (US5007440A), and 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 to claim 1 filed 8/26/2025 with respect to the 35 USC 103 rejections have been fully consider and are found persuasive. Therefore, the rejection is withdrawn. However, upon further consideration a new ground of rejection is made in view of Hoffman (US20140318554A1, in view of Robinson (US5007440A), and Benz (WO2006029713A1) as set forth above.
Applicant argues on page 10 of the remarks:
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This is found persuasive in view specifically of the amendment to claim 1 and the rejection is withdrawn accordingly. However, a new ground of rejection is set forth as explained above in view of Hoffman, Robinson, and Benz, repeated in part as follows for clarity: e.g., Benz teaches the tobacco product should undergo a step of searing (page 2 first paragraph) and that this method of treatment of Benz which includes searing is beneficial because the resulting treated tobacco product is soft and subtle and ensure the a very good release effect (page 2 paragraph 8).
Conclusion
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/M.T.F./Examiner, Art Unit 1747
/RUSSELL E SPARKS/Primary Examiner, Art Unit 1755