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 .
Status of the Claims
Claims 1-9 and 11-16 are pending and are subject to this office action. This office action is in response to Applicant’s amendments filed on 2/10/26 and 2/18/25.
Claims 1, 6, 7, 11, and 13 are amended.
Claim 10 is cancelled.
Claims 13-16 are withdrawn.
Election/Restrictions
Applicant's election with traverse of Group I: Claims 1-12 in the reply filed on 2/10/26 is acknowledged. The traversal is on the ground(s) that: (1) the Examiner failed to establish serious search burden (Applicant’s Arguments filed 2/10/26, page 5), and (2) Groups I and II share at least one common special technical feature (Applicant’s Arguments filed 2/18/26, page 5). This is not found persuasive because:
(1) The restriction was made under the requirement for unity of invention provision as required in 37 CFR 1.475(a). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. As such, the examiner does not need to establish a serious search burden and restriction is appropriate.
(2) While the Applicant alleges that Groups I and II share at least one common special technical feature, Applicant did not specify the alleged special technical feature. Therefore, because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
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 1-6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Sanghvi (US 20080081071 A1) in view of Hernandez (US 20180014568 A1).
Regarding Claim 1, Sanghvi discloses a pouch suitable for white snus ([0028], [0071]):
wherein the pouch comprises a fabric (Suitable materials include fabric. [0034]),
wherein a surface of the fabric is at least partially coated with an odorizing composition comprising tobacco particles (the porous substrate may be partially embedded with a water-soluble film. [0035]. The material incorporated into the water-soluble film may include tobacco. [0071]),
wherein the odorizing composition is an ink comprising a liquid and a coloring agent (color additives may be added to the film. [0065]. Water may be used as a base component of the film. [0101]),
wherein the liquid is one or more selected from water, propylene glycol, glycerin, and propylene glycol and glycerin (Water, propylene glycol, and glycerin may be used to form the water-soluble film. [0101]-[0102]), and
wherein the odorizing composition is configured to release odorizing molecules by an activation signal of a user ("The water-soluble film may dissolve when contacted with moisture at the administration site within the body, such as in the oral cavity" [0035]).
Sanghvi does not explicitly disclose tobacco particles having an average size < 30 µm. However, Hernandez teaches a similar smokeless tobacco product ([0033]) wherein a surface of the fabric is at least partially coated with an odorizing composition comprising tobacco particles having an average size ≤ 30 µm (A second tobacco material may be applied to the pouch, wherein the tobacco particles have an average diameter ranging from 0.1 µm to 1000 µm. [0038]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the selection of tobacco particles of Sanghvi with particles specifically ranging from 0.1 µm to 1000 µm as taught by Hernandez because Sanghvi and Hernandez are both directed to pouched oral products, Hernandez teaches the use of tobacco particles ranging from 0.1 µm to 1000 µm to coat a pouched oral product such that the tobacco particles comprise an average diameter smaller than the average diameter of the pores of the pouch fabric ([0013], [0038]), and this merely involves applying a known tobacco particle size applied to a pouched oral product fabric to a similar pouched oral product to yield predictable results.
Regarding Claim 2, Hernandez discloses a pouch wherein: the average size of the tobacco particles is ≥ 1 µm (A second tobacco material may be applied to the pouch, wherein the tobacco particles have an average diameter ranging from 0.1 µm to 1000 µm. [0038]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Regarding Claim 3, Sanghvi discloses a pouch wherein: the odorizing composition comprises 0.05 - 60 % (weight/weight) of the tobacco particles (Flavors may be present in the film in amounts of 5 to 30% by weight of the film and active ingredients may range from 0.001% to 50% by weight of the film. [0070]-[0074]. Whether the tobacco particles are qualified as a flavor compound or an active ingredient, a prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Regarding Claims 4 and 5, Sanghvi discloses a pouch comprising a water-soluble film as discussed above in Claim 1 but does not explicitly disclose the viscosity or density of the film. However, given that the viscosity and density of a water-soluble film is dependent on the composition, specifically the composition comprising a solvent and any added particulate, it follows that Sanghvi in view of Hernandez, having an overlapping composition as the claimed odorizing composition, would reasonably have a viscosity of 20 to 500 dPas and a density of 0.5 g/cm3 to 2.5 g/cm3, similarly as claimed, absent evidence to the contrary. (See MPEP 2112.III).
Regarding Claim 6, Sanghvi discloses a pouch wherein: the odorizing composition further comprises one or more substances selected from solvents, pigments, dyes, resins, lubricants, solubilizers, surfactants, particulate matter, fluorescents, water, humectant, glue, dyes, and resins (the film may include: flavors, colorants, and/or plant matter. [0047]).
Regarding Claim 8, Sanghvi discloses a pouch wherein: the odorizing composition is only located on parts of the surface of the fabric (the porous substrate may be partially embedded with a water-soluble film. [0035]) but does not specify the contrast between the surface of the fabric coated with the odorizing composition and the surface of the fabric which is not coated with the odorizing composition. However, the courts have held that, matters relating to ornamentation which do not have a mechanical function do not patentably distinguish the claimed invention from the prior art (In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) as cited in MPEP 2144.04(1)). Here, the contrast between the surface of the fabric coated with the odorizing composition and the surface of the fabric which is not coated with the odorizing composition as claimed in Claim 8 does not relate to any claimed mechanical function. Therefore, Claim 8 does not patentably distinguish the claimed invention from the pouched oral product disclosed in the prior art.
Regarding Claim 9, Hernandez discloses a pouch wherein: an amount of the tobacco particles is less than 2 % (weight/weight) of the pouch ("The amount of the second tobacco material present in the impregnated tobacco-containing fabric can vary, but will typically be from about 0.1 wt. % to about 90 wt. %" [0037]. A prima facie case of obviousness exists where claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP § 2144.05(I)).
Regarding Claim 11, Sanghvi discloses a pouch wherein: the activation signal is one or more selected from temperature change, human contact, friction, mechanical strain, exposure to visible light, humidity change, pressure change, electric signal, UM-light, IR-radiation, light, and electromagnetic radiation ("The water-soluble film may dissolve when contacted with moisture at the administration site within the body, such as in the oral cavity" [0035]).
Regarding Claim 12, Sanghvi discloses a white snus product comprising:
carrier material (A material may be contained inside the pouch which may include active components or food products. [0029]) and
nicotine without tobacco being present (Nicotine may be present in the pouch. [0047], [0050]. Nicotine may be used as an active ingredient in the absence of tobacco. [0029]-[0030]),
wherein: the white snus product is arranged in the pouch according to claim 1 ([0028]-[0029]. See Claim 1).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sanghvi in view of Hernandez as applied to Claim 1 above, and in further view of Doolittle (US 20100018540 A1)
Regarding Claim 7, Sanghvi discloses wherein the odorizing composition is only located on parts of the surface of the fabric (the porous substrate may be partially embedded with a water-soluble film. [0035]), but does not explicitly disclose wherein the odorizing composition is printed in a pattern which is one or more selected from a letter, a logo, a Symmetric geometrical pattern or shape, a company logo, a company name, a trademark, and machine-readable code.
Doolittle teaches a similar pouched oral product ([0071]):
wherein the pouch comprises a fabric (The pouch may be made from a permeable fabric. [0073]),
wherein a surface of the fabric is at least partially coated with an odorizing composition (Compounds such as flavoring ingredients or other compounds may be applied to the pouch material. [0073]. Such additives to the pouch material may include aroma producing compounds. [0081]),
wherein the odorizing composition is an ink comprising a liquid and a coloring agent (Inks and dyes may be added to the pouch and further carry the flavors or other substances and may be printed unto the pouch. [0095]. Such additives may comprise aroma producing compounds. [0081]),
wherein the odorizing composition is configured to release odorizing molecules by an activation signal of a user (An aroma may be given off when the pouch is moistened by a user. [0081]),
wherein: the odorizing composition is located only on parts of the surface of the fabric in a predetermined pattern and the pattern is one or more selected from a letter, a logo, a Symmetric geometrical pattern or shape, a company logo, a company name, a trademark, and machine-readable code (A pouch may be printed with dissolvable materials to identify the type of snus, wherein the printing material may comprise: ink, dyes, flavors, moisture releasing aromatics. [0081], [0095]. Printing methods include printing words, colors, or pictures on the pouch. [0058]).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one having ordinary skill in the art to modify the deposition of the water-soluble film of Sanghvi with a pattern, such as a letter or picture, as taught by Doolittle because Sanghvi, Hernandez, and Doolittle are all directed to pouched oral products, Doolittle teaches the use of an aromatic ink used to print a pattern on a pouched oral product in order to identify the contents of the pouched oral product, and this merely involves applying a known pouched oral product component to a similar pouched oral product to yield predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey Buckman whose telephone number is (571)270-0888. The examiner can normally be reached Monday-Friday 8:00-4:00.
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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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/JEFFREY A. BUCKMAN/ Examiner, Art Unit 1755
/PHILIP Y LOUIE/ Supervisory Patent Examiner, Art Unit 1755