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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/8/2026 has been entered.
Response to Arguments
Applicant's arguments filed 1/8/2026 have been fully considered but they are not persuasive..
Applicant argues that, in the preferred embodiment of Arndt, the tobacco particles "are substantially all derived from leaf tobacco lamina". Therefore, Arndt minimizes the amount of stem tobacco used, and therefore teaches away from the presently claimed invention.
The examiner respectfully disagrees. As indicated in the rejection, Arndt discloses preferably that the homogenized plant material in sheet form contains between about 10 percent and about 92 percent by weight tobacco particles on a dry weight basis. Arndt further discloses that the tobacco particles are substantially all derived from tobacco leaf lamina, but can comprise stems.
To understand the intended meaning of “substantially,” we turn to other embodiments in paragraph [0075], which states:
“In certain embodiments of the invention, the plant particles forming the homogenised plant material may include at least 98 percent by weight of clove particles or at least 95 percent by weight of clove particles or at least 90 percent by weight of clove particles, based on dry weight of the plant particles. In such embodiments, the aerosol-generating substrate therefore comprises clove particles, with substantially no other plant particles.”
From these certain embodiments, it will be assumed that “substantially no other plant particles” includes up to 10% by weight other plant particles. It will also be assumed that the statement “tobacco particles are substantially all derived from tobacco leaf lamina, but can comprise stems” is construed to mean that the tobacco particles can comprise up to 10% by weight of stems. Therefore, the homogenized plant material in sheet form containing up to about 92 percent by weight tobacco particles on a dry weight basis is construed to include up to 9.2 (10 percent of 92) percent by weight tobacco of stems, which overlays the claimed range of 5% to 60% by weight.
Regarding the argument that Arndt et al fails to teach or suggest a link between the inclusion of tobacco stem and the improvement in the strength and robustness of the aerosolizable material, and instead describes a completely different means for improving the strength of an aerosolizable material, it is well-settled that references need not be combined for the purpose of solving the same problem solved by Appellants. See, e.g., Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."). It is sufficient that the references would have led a skilled artisan to do what Appellants did, although Appellants' particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983).
The outstanding rejections are maintained, but have been modified to address the amendments to 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5, 7, 10-12 and 15 are rejected under 35 U.S.C. 103 as unpatentable over Arndt et al (US 2021/0345659). US 2021/0345659 was originally filed 8 October 2019 as PCT/EP2019/077192 and published as WO 2020/074494 A1 on 16 April, 2020. PCT/EP2019/077192 draws priority to European application 18199205.8, filed 8 October, 2018.
Claims 1-2: Arndt et al discloses an aerosol-generating substrate comprising a homogenized plant material in sheet form including clove particles, an aerosol-former, and a binder (Abs., [0001], [0013], [0021]). The homogenized plant material may be in the form of a plurality of strands, strips or shreds formed from the sheet of homogenized plant material by shredding [0124]. The homogenized plant material in sheet form reads on a sheet or shredded sheet of aerosolizable material. The homogenized plant material in sheet form preferably contains between about 10 percent and about 92 percent by weight tobacco particles [on a dry weight basis ([0081]-[0082]).
In a preferred embodiment, the tobacco particles are substantially all derived from tobacco leaf lamina., but can comprise stems [0085]. Arndt et al does not prohibit an amount of stem tobacco used. To understand the intended meaning of “substantially,” we turn to other embodiments in paragraph [0075], which states:
“In certain embodiments of the invention, the plant particles forming the homogenised plant material may include at least 98 percent by weight of clove particles or at least 95 percent by weight of clove particles or at least 90 percent by weight of clove particles, based on dry weight of the plant particles. In such embodiments, the aerosol-generating substrate therefore comprises clove particles, with substantially no other plant particles.”
From these certain embodiments, it will be assumed that “substantially no other plant particles” includes up to 10% by weight other plant particles, such as stem tobacco particles.. It will also be assumed that the statement “tobacco particles are substantially all derived from tobacco leaf lamina, but can comprise stems” is construed to mean that the tobacco particles can comprise up to 10% by weight of stems. Therefore, the homogenized plant material in sheet form containing up to about 92 percent by weight tobacco particles on a dry weight basis is construed to include up to 9.2 (10 percent of 92) percent by weight tobacco of stems, which overlays the claimed range of 5% to 60% by weight.
Obtaining a claimed amount of tobacco particles comprising tobacco lamina and up to 9.2% stem tobacco is embodied or, at least, would have been obvious to one of ordinary skill in the art from the disclosure of Arndt et al.
The homogenized plant material in sheet form has a thickness of between 100 micrometers and 600 micrometers, preferably between 150 micrometers and 300 micrometers, most preferably between 200 micrometers and 250 micrometers [0126]. The homogenized plant material in sheet form has a grammage (area density) of between about 100 g/m2 and about 300 g/m2 [0127]. The disclosed ranges overlay the claimed ranges.
In disclosed embodiments, the aerosol-generating substrate of Arndt et al comprises a composition overlaying the claimed composition or, at least, it would have been obvious to one of ordinary skill to form an aerosol-generating substrate having a claimed composition from the disclosure of Arndt et al absent convincing evidence of unexpected results commensurate in scope with the claims.
Claim 3: The homogenized plant material in sheet form has a cross direction tensile strength preferably from 150 N/m to 350 N/m (2.25 N/15 mm to 5.25 N/15 mm). [0134], and a machine direction tensile strength preferably from 280 N/m to 620 N/m (4.2 N/15 mm to 9.3 N/15 mm) [0134]. The disclosed ranges embody a tensile strength of at least about 4 N/15 mm or, at least, it would have been obvious to one of ordinary skill to obtain a claimed tensile strength from the disclosure of Arndt et al.
Claim 5: The sheet or shredded sheet comprises a plurality of strands or strips of aerosolizable material typically having a width of 2 mm or less in an embodiment [0141] or, at least, shredding the sheet to form strands or strips having a claimed width would have been obvious to one of ordinary skill from the disclosure of Arndt et al.
Claim 7: Arndt et al discloses that the moisture content of the homogenized plant material in sheet form after drying is between about 5 percent and about 15 percent based on the total weight of the sheet ([0177]-[0178]). The homogenized plant material in sheet form comprises an aerosol-former content of between about 5 percent and about 30 percent by weight on a dry weight basis, such as between about 10 percent and about 25 percent by weight on a dry weight basis, or between about 15 percent and about 20 percent by weight on a dry weight basis [0115]. By calculation using the disclosed amounts of moisture and aerosol-former, the total content of moisture and aerosol former ranges from between about 10 percent and about 45 percent by weight on a dry weight basis, such as between about 15 percent and about 40 percent by weight on a dry weight basis or between about 20 percent and about 35 percent by weight on a dry weight basis. The total calculated amounts overlay the claimed range or, at least, obtaining a claimed amount of water and aerosol-former would have been obvious to one of ordinary skill in the art absent convincing evidence of unexpected results commensurate in scope with the claims.
Claim 10: In an embodiment, the homogenized plant material in sheet form comprises an aerosol former content of between about 10 percent and about 25 percent by weight on a dry weight basis [0115].
Claim 11: The particulate clove material and the particulate tobacco material may both have D95 values of from greater than or equal to about 20 microns to D95 values of less than or equal to about 300 microns, preferably D95 values of from greater than or equal to 30 microns to D95 values of less than or equal to about 120 microns [0102]. The disclosed range overlays the claimed range or, at least, obtaining a claimed size distribution of the tobacco particles would have been obvious to one of ordinary skill in the art absent convincing evidence of unexpected results commensurate in scope with the claims.
Claim 12: The homogenized plant material may further comprise fibres to alter the mechanical properties of the homogenized plant material. Suitable fibers include cellulose fibres; soft-wood fibres; hard-wood fibres, etc.
Claim 15: The limitations have been discussed above. Crimping of the homogenized plant material is optional, but not required. Therefore, an uncrimped homogenized plant material is embodied or, at least, would have been obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS R CORDRAY whose telephone number is (571)272-8244. The examiner can normally be reached Monday-Friday 8 AM-5 PM (EST).
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/DENNIS R CORDRAY/Primary Examiner, Art Unit 1748