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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Status of the Claims
Claims 1-2, 4-23, and 45-47 are pending and are subject to this office action. Claim 1 has been amended. Claim 47 is new.
Information Disclosure Statement
The information disclosure statements filed 10/20/2025, 11/05/2025, and 11/07/2025 fail to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because they list non-patent publications without providing a publication date, date of retrieval, or time frame when the document was available as a publication. It has been placed in the application file and references have been considered except where lined through. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Response to Amendment
The Examiner acknowledges the Applicant’s response filed on 11/06/2025 containing amendments and remarks to the claims.
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
On pg. 9, Applicant argues that Bottacco fails to teach a step of subjecting the mixture to a forming step for transformation into a sequence of discrete portions, as required by the amendment to claim 1. The Examiner disagrees because Bottacco discloses a fractioning unit (6) downstream of the mixing unit (4) for dividing the tobacco paste into portions (100, Fig. 1, Fig. 6, [0033, 0083-0084]) which is considered to meet the limitation of a forming step. Therefore, the rejection of claim 1 is maintained.
The rejection below is modified based on amendments made to the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-2, 4, 6-8, 10, 12, 13, 14, 16, 19, 21, and 45-47 are rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022).
Regarding claim 1, Bottacco discloses a method for producing reconstituted tobacco (abstract), comprising:
A pulverization system (2, Fig. 2) for grinding tobacco powder (12) to a particle size of less than 150µm ([0078]). The claimed range of 20 to 220µm overlaps with the range taught by the prior art and is therefore considered prima facie obvious.
A gelling machine (3, Fig. 3) for producing a binder gel (13) comprising water, a binder, and glycerin or propylene glycol ([0037], [0079]). The binder gel (13) is supplied to the mixing unit (4; Fig. 1).
A mixing unit (4) for mixing the tobacco powder (12), plant powder (14), and the binder gel (13; Fig 1) to form a tobacco paste (10) with a moisture content less than 50% ([0036]; [0050]). The plant powder may comprise cellulose in powdered form ([0046]). The claimed range of 30-50% lies within the range taught by the prior art and is therefore considered prima facie obvious.
A fractioning unit (6) downstream of the mixing unit (4) for dividing the tobacco paste into portions (100, Fig. 1, Fig. 6, [0033, 0083-0084]) which is considered to meet the limitation of a forming step.
A rolling unit (7) where the portions (100) are passed through a first lamination of primary rollers (71) to obtain a flat web of material (101; Fig. 6) with a thickness of less than 1.2 mm ([0051]; [0084]). The range of less than 1.2mm taught by the prior art overlaps with the claimed range of 1-20mm and is therefore considered prima facie obvious.
The flat web of material (101) is smoothed further by cooperation of one primary rollers (71) and a secondary roller (72) arranged downstream of the primary roller (Fig. 6, ([0051]; [0084]). Bottacco discloses that the smoothing process is carried out by at least 2 pairs of rollers ([0036]) which is considered to meet the claim limitation of a series of further lamination steps.
Bottacco teaches that the thickness of the flat web decreases over successive lamination steps ([0036]). The flat web of material may have a thickness between 30 and 500µm ([0018]; [0051]). The range taught by the prior art overlaps with the claimed range of 90-280 µm and is therefore considered prima facie obvious.
A drying unit (8) downstream of the rolling unit (7) to dry the flat web (101) to a moisture content of 6-10% ([0035]; [0061]). The range of 6-10% taught by the prior overlaps within the claimed range and is therefore considered prima facie obvious.
Bottacco discloses a rolling unit (7) for performing the lamination steps where the portions (100) are consolidated into a continuous strip (101, Fig. 6, [0084]).
Bottacco does not explicitly disclose that the method comprises a first lamination step that consolidates the portions into a continuous strip using a first rolling unit followed by a series of further laminations steps carried out by a separate rolling station.
However, Iodice, directed a method for producing reconstituted vegetable strips (abstract), discloses:
Submitting a mixture of milled vegetable material, cellulose fibers, a binding compound, a humectant agent, and water through a pre-lamination system (“a first lamination step”) comprising two lamination rollers (“a pair of rolling cylinders”, 4, 7) with adjustable spacing between 0.02-2.50mm (Fig. 1, Fig. 2, [0100-0101, 0108]). The thickness of the laminated material is defined by the roller spacing and therefore the resulting thickness overlaps with the claimed range of 1 to 20mm.
The prelamination process causes stretching, decreases the thickness, and further homogenizes the mass which promotes the obtainment of more resistant materials ([0102]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco by providing a separate lamination rollers in between the fractioning unit (6) and the rolling unit (7) as taught by Iodice because both Bottacco and Iodice are directed to the production of reconstituted plant films, Iodice teaches that passing the mixture through a pre-lamination process promotes the obtainment of more resistant materials and this involves applying a known technique of pre-lamination to a similar process to yield predictable results.
Bottacco discloses a rolling unit (7) where portions (100) are consolidated into a continuous strip (101) by pairs of rollers (71, 72, Fig. 6, [0084]). Iodice discloses subjecting a similar mixture to first/prelamination step using a pair of rollers (4,7, Fig. 2, [0100-0101]). Therefore, a person having ordinary skill in the art would reasonably expect that passing the portions (100) of Bottacco (Fig. 6) through the prelamination rollers (4,7, Fig. 2) of Iodice would result in consolidating the portions into a continuous strip.
Regarding claim 2, Bottacco discloses wherein the dried continuous strip is subjected to winding ([0021]) or shredding into threads of predefined dimensions ([0022]).
Regarding claim 4, Bottacco discloses wherein the solid components of the tobacco are ground with a mill (“micronizing mill 21”, [0072]).
Regarding claim 6, Bottacco discloses wherein powdered cellulose consisting of an organic fiber obtained from natural cellulose is used ([0007]). The plant powder comprising cellulose is considered to meet the claim limitation of naturally derived cellulose.
Regarding claim 7, Bottacco discloses the mixture is formed with powdered cellulose having a particle size of less than 350µm ([0009, 0025]). The claimed range lies within the range taught by the prior art and is therefore considering prima facie obvious.
Regarding claim 8, Bottacco discloses the mixture is formed with powdered cellulose in a percentage of less than 30% of the tobacco powder ([0007, 0008, 0046, 0074]). The claimed range of 2 to 10% lies within the range taught by the prior art and is therefore considering prima facie obvious.
Regarding claim 10, Bottacco discloses supplying powdered material (11) comprising tobacco powder (12) and plant powder (14) to the mixing unit (4; Fig. 1). The plant powder (14) may comprise cellulose in powdered form ([0046]). The binder gel (13) comprising water, a binder, and glycerin or propylene glycol ([0037], [0079]) is supplied to the mixing unit (4) in a separate supply line (Fig. 1). Therefore, the powdered cellulose and tobacco powder are mixed before being supplied to the mixing unit (4).
Regarding claim 12, Bottacco discloses wherein said mixture is subjected to at least one of a homogenization (“mixing unit”, [0030]) or molding step (“extrusion unit”, [0032]) before subjecting the mixture to the first lamination step.
Regarding claim 13, Iodice discloses:
The pre-lamination causes homogenization of the mass and cellulose fibers (“a homogenization phase”) and can be performed more than once ([0102]). Therefore, Iodice discloses an embodiment where the pre-lamination is performed twice which reads on the claimed homogenization phase followed by a first lamination step.
The pre-lamination system employs rollers with a length of 600mm ([0103]). The roller length defines the maximum width of the laminated product. A width of less than 600mm overlaps with the claimed range is therefore considered prima facie obvious.
The pre-lamination system using two rollers with adjustable spacing between 0.02-2.50mm ([0101]). The thickness of the laminated material is defined by the roller spacing and therefore the resulting thickness overlaps with the claimed range of 1 to 10mm.
Regarding claim 14, Bottacco discloses wherein said mixture is subjected to at least one of a homogenization (“mixing unit”, [0030]) or molding step (“extrusion unit”, [0032]) for transformation into a sequence of portions ([0033]) prior to the first lamination step.
Regarding claim 16, modified Bottacco discloses wherein said first lamination comprises a homogenization step (Bottacco: “mixing unit”, [0030]) which is carried out before the pre-lamination step which produces a continuous strip using two rollers with adjustable spacing between 0.02-2.50mm (Iodice: ([0101]). The thickness of the laminated material is defined by the roller spacing and therefore the resulting thickness overlaps with the claimed range of 1 to 20mm.
Regarding claim 19, modified Bottacco discloses wherein a monolayer tape is produced in the prelamination step (“first lamination step”) using two rollers with adjustable spacing between 0.02-2.50mm (Iodice: ([0101]). The thickness of the laminated material is defined by the roller spacing and therefore the resulting thickness overlaps with the claimed range of 1 to 10mm.
Regarding claim 21, Bottacco discloses wherein in said series of further rolling passes, the method further comprises a rest between a laminating station and the next (Fig. 6). The portions of tobacco paste (100) pass through a first pair of rollers (71, 71) followed by a second pair of rollers (71, 72). The flat web (101) traveling from one pair of rollers to the next is considered to meet the claim limitation of a rest between a laminating station and the next.
Regarding claim 45, Bottacco discloses wherein at least one binding agent includes carboxymethylcellulose (CMC) ([0005]).
Regarding claim 46, Bottacco discloses the at least one binder includes guar meal ([0005]) and Iodice discloses the material passes vertically through two lamination rollers in the prelamination system (Fig. 2, [0101, 0104, 0108]),
Regarding claim 47, modified Bottacco discloses separate lamination rollers in between the fractioning unit (6) producing the portions (100) and the rolling unit (7, Bottacco: Fig. 1, Fig. 6, [0083-0084]). As there is no further processing equipment between the fractioning unit (6) and the rolling unit (7), the series of further lamination steps in the rolling unit (7) is considered to be immediately following the first/pre-lamination step.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, further in view of Fichtali (US 20060122410 A1).
Regarding claim 5, Bottacco discloses using a micronizing mill (21) to comminute the tobacco ([0072]).
Bottacco does not explicitly disclose that the solid components are tobacco ground with a cryogenic pin mill.
However, Fichtali, directed to preparing plant biomass for extraction (abstract), discloses:
Comminuting the biomass using a pin mill, where liquid nitrogen is injected during the comminution process to optimize the process and/or quality of the comminuted biomass and/or downstream products ([0058]).
Comminuting using a pin mill and liquid nitrogen injection is considered to meet the claim limitation of a cryogenic pin mill.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by substituting the micronizing mill with a cryogenic pin mill to comminute the solid components of tobacco as taught by Fichtali because both Bottacco and Fichtali are directed to comminuting plant materials, Fichtali teaches the cryogenic pin mill optimizes the process and/or quality of the products and this involves substituting one known comminution means for another to yield predictable results.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, and further in view of Deforel (US 20210329964 A1)
Regarding claim 9, Bottacco discloses adding plant powder to the slurry ([0007]).
Bottacco does not explicitly disclose that the plant powder may include ground cloves.
However, Deforel, directed to a method of making homogenized plant material for use in an aerosol-generating substrate ([0099]), discloses that the aerosol-generating substrate contains clove particles (abstract) to provide clove aromas upon heating of the substrate ([0007]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by adding ground cloves to the slurry as taught by Deforel because both Bottacco and Deforel are directed to methods for making homogenized plant material, Deforel teaches that adding clove particles provides clove aromas upon heating of the aerosol generating substrate and this involves applying a known technique of adding cloves to a similar process to yield predictable results.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, and further in view of Graves (US 4702264 A).
Regarding claim 11, Bottacco discloses mixing the slurry in a mixing unit comprising a rotary stirrer ([0080]) to produce a tobacco paste.
Bottacco does not explicitly disclose subjecting the slurry to a roughing step for passage through at least one pair of grooved cylinders.
However, Graves, directed to processing tobacco leaf, discloses
A process for providing tobacco material in sheet like form comprising subjecting the tobacco material to size reduction, mixing the tobacco material with a binding agent in the presence of sufficient moisture, and passing the mixture through a nip roller system to form sheet like processed tobacco material (claim 1).
Passing the tobacco/binding agent mixture to through the nip of a pressurized roller system having two rollers wherein at least one of the roller faces comprises a series of grooves (“a pair of grooved cylinders”, col. 2 lines 11-30).
Working of the material by the action of the grooved roller can act to further activate binding agent within the mixture (col. 10 lines 61-67).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by passing the mixture through a pair of grooved cylinders as taught by Graves because both Bottacco and Graves are directed to tobacco processing, Graves teaches that passing the mixture through the grooved roller can further activate the binding agent and this involves applying a known technique of using grooved rollers to a similar process to yield predictable results.
Claims 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, and further in view Smith (US 4446678 A).
Regarding claim 15, Iodice discloses passing the mixture through a pre-lamination system (Fig. 2, [0100-0101, 0108]).
Modified Bottacco does not explicitly disclose the first rolling unit comprises a feeder lobe.
However, Smith, directed to a plant material processing machine, discloses
a machine for the continuous physical processing of plant matter using intermeshing multilobed rollers (col. 1, lines 36-39).
material fed between the multilobed rollers is subjected to compressive and shearing forces (col. 1 line 57-62)
drive torque for the rollers can be transmitted through the intermeshing lobes and therefore the drive mechanism for the machine can be less complicated, less expensive, and more efficient (col. 2, lines 4-9).
a versatile machine capable of carrying out physical processing with a large number of different material types (col. 1 lines 50-53)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by providing multilobed rollers as part of the pre-lamination system (“a first rolling unit”) as taught by Smith because both Bottacco and Smith are directed to plant processing, Smith teaches that intermeshing lobes transmit drive torque which results in a drive mechanism for the machine that can be less complicated, less expensive, and more efficient and this involves applying a known technique of using lobed rollers a similar process to yield predictable results of an improved drive mechanism.
Regarding claim 18, Bottacco discloses passing the mixture through a rolling unit (7) which comprises at least 2 pairs of rollers ([0036]).
Bottacco does not explicitly disclose that the mixture is homogenized predominantly or exclusively by means of a feeder lobe at the input of the pairs of rollers.
However, Smith, directed to a plant processing machine, discloses
a machine for the continuous physical processing of plant matter using intermeshing multilobed rollers (col. 1, lines 36-39).
material fed between the multilobed rollers is subjected to compressive and shearing forces (col. 1 line 57-62)
drive torque for the rollers can be transmitted through the intermeshing lobes and therefore the drive mechanism for the machine can be less complicates, less expensive, and more efficient (col. 2, lines 4-9).
a versatile machine capable of carrying out physical processing with a large number of different material types (col. 1 lines 50-53)
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by including multilobed rollers at the input of the rolling unit as taught by Smith because both Bottacco and Smith are directed to plant processing, Smith teaches that intermeshing lobes transmit drive torque which results in a drive mechanism for the machine that can be less complicated, less expensive, and more efficient and this involves applying a known technique of using lobed rollers a similar process to yield predictable results of an improved drive mechanism.
The examiner takes the position that since modified Bottacco uses the same means of homogenization (feeder lobes) a similar result of predominantly or exclusively homogenizing the mixture would be achieved.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, and further in view of Del Borrello (US 20230025967 A1)
Regarding claim 17, modified Bottacco discloses:
• A fractioning unit (6) designed to divide up the profile extruded from the extrusion unit to generate portions of tobacco paste (100, Bottacco: Fig. 6, [0033, 0083-0084]).
Submitting the portions through a pre-lamination system comprising two lamination rollers (4, 7) with adjustable spacing between 0.02-2.50mm (Iodice: Fig. 2, [0100-0101, 0108]) to produce a continuous strip. The thickness of the laminated material is defined by the roller spacing and therefore the resulting thickness overlaps with the claimed range of 1 to 20mm.
Bottacco does not explicitly disclose a homogenizing step of the portions before obtaining the continuous strip.
However, Del Borrello, directed to the production of sheets homogenized tobacco material, discloses
generating a slurry including a material containing alkaloids, an aerosol former and water; and extruding the slurry and collecting the extruded slurry in a tank having a plurality of outlets (abstract)
the slurry is supplied to the subsequent processing step by the plurality of outlets ([0039]).
Mixing or stirring the extruded slurry in the tank to improve the homogeneity of the slurry ([0092]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by stirring the extrudate in a tank as taught by Del Borrello because both Bottacco and Del Borrello are directed to production of tobacco sheets, Del Borrello teaches that stirring the extrudate increases the homogeneity of the mixture and this involves applying a known technique of stirring the mixture a similar process to yield predictable results of improved homogeneity.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, and further in view of Graves (US 4768527 A).
Regarding claim 20, Bottacco discloses a rolling unit to generate a flat web of material ([0036]) with a thickness of less than 2mm ([0018]).
Bottacco does not explicitly disclose subjecting the flat web to stratification until a multilayer strip is obtained.
However, Graves, directed to a smokable material with multi-layered structure, discloses
a first filler material and second filler material are processed and each separately passed through roller system (Fig. 1).
The compressed materials (22) and (36) are fed into separate extruders to produce a multi-layer sheet-like material (col. 3 lines 25-30).
An embodiment having 3 co-extruded layers with a thickness ranging from 1/4 inch to about 3/16 inch col. 12 lines 21-25). The range of 1/4 inch to about 3/16 inch disclosed in the prior art lies within the claimed range and is therefore considered prima facie obvious.
A material which includes multiple types of filler materials can be manufactured, where each layer is a different type of filler material (col 2 lines 21-34).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by using multiple extruders after the first lamination step to generate a multilayer laminate as taught by Graves because both Bottacco and Graves are directed to processing tobacco materials, Graves teaches that the multilayer laminate can be comprised of layers of different filler material and this involves applying a known technique of using multiple extrusion units in a similar process to yield predictable results of creating a multilayer laminate.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, and further in view of Del Borrello (US 20220022519 A1).
Regarding claim 22, Bottacco discloses passing the mixture through a rolling unit (7) which comprises pairs of rollers ([0036]).
Bottacco does not explicitly disclose that the rollers are at least partially heated.
However, Del Borrello, directed to a method for producing a sheet of a material containing alkaloids, discloses
controlling the thickness of the sheet by subsequent compression steps between rollers ([0012])
the rollers are heated by a hot fluid ([0061])
drying may be improved in efficiency by heating the rollers ([0064])
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by using heated rollers as taught by Del Borrello because both Bottacco and Del Borrello are directed to the production of sheets for use in aerosol generating articles, Del Borrello teaches that heated rollers improves the drying efficiency and this involves applying a known technique of using heated rollers in a similar process to yield predictable results.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Bottacco (US 20220346433 A1) in view of Iodice (US 20210244069 A1, as cited on IDS dated 09/12/2022) as applied to claim 1 above, and further in view of Soots (US 5755238 A).
Regarding claim 23, Bottacco discloses feeding the flat web to a drying unit comprising a hot air oven ([0077])
Bottacco does not explicitly disclose that the hot air in the oven is recirculated.
However, Soots, directed to an apparatus for drying tobacco, discloses
drying tobacco in a plurality of fluidized bed dryers using heated air (col. 3, lines 12-16).
Recirculating the air within the dryer heating zones (claim 1)
The dryer requires low residence time to dry the material to the requisite level (col. 5 lines 18-22).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Bottacco, in view of Iodice, by using a drying air recirculation system as taught by Soots because both Bottacco and Soots are directed to tobacco processing, Soots teaches that drying air recirculation system requires low residence time to dry the material and this involves applying a known technique of drying recirculated air in a similar process to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN FAITH DEZENDORF whose telephone number is (571)272-0155. The examiner can normally be reached M-F 8am-430pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Philip 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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/M.F.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755