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
Claims 1-2, 6-7 and 9 are amended. Claims 12-15 and 17-19 are cancelled. Claims 20-21 are newly added. Claims 1-11, 16 and 20-22 are presently examined.
Applicant’s arguments regarding the objection to the claims have been fully considered and are persuasive. The objection of 3/12/2026 is withdrawn.
Applicant’s arguments regarding the rejections under 35 USC 112(b) have been fully considered and are persuasive. The rejections of 3/12/2026 are overcome.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant is advised that should claim 2 be found allowable, claim 22 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Regarding claim 7, the claim recites the limitation “drying unit” which uses the functional language “drying” coupled with the generic placeholder “unit” without reciting any additional structure of the drying unit. The claim is therefore interpreted under 35 USC 112(f). A review of applicant’s specification indicates that the corresponding structure for a drying unit is a series of internally steam heated cylinders (page 15, lines 33-35, page 16, lines 1-3).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4-9 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Selke (US 4,542,755) in view of Gellatly (US 5,724,998) and Klipfel (US 10,321,707, hereafter referred to as Klipfel ‘707).
Regarding claims 1-2 and 21-22, Selke discloses a method of making reconstituted tobacco in which fibrized tobacco stems and scrap, which are considered to meet the claim limitation of a raw tobacco material, are deposited on a moving foraminous surface to form a web, which is considered to meet the claim limitation of a raw tobacco material layer. An adhesive, which is considered to meet the claim limitation of a binding agent, is applied to the web of the tobacco particles, and the composition is subsequently dried. Tobacco fines, which are considered to meet the claim limitation of tobacco particles, are applied to the web along with the adhesive (column 2, lines 30-68, column 3, lines 1-9). The tobacco fibers are laid by a forming head (column 5, lines 22-46, figure 2, reference numeral 20). The moving surface is a belt that moves around support rolls (column 5, lines 22-46), which is considered to meet the claim limitation of a conveyor belt. The fines are smaller than 60 mesh (column 8, lines 60-68, column 9, lines 1-11). Some of the binder is added in a liquid carrier (column 6, lines 43-68, column 7, lines 1-6), which is considered to meet the claim limitation of a liquid medium. Selke does not explicitly teach (a) the tobacco fines having an average particle size of 30 microns or less and (b) a temperature at which the binder, liquid carrier, and tobacco fines are applied to the web.
Regarding (a), Gellatly teaches reconstituted tobacco sheets (abstract) made from tobacco dust that is ground to a particle size of less than about 32 microns to improve the homogeneity of the tobacco material (column 4, lines 20-31).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the tobacco fines of Selke have the particle size of Gellatly. One would have been motivated to do so since Gellatly teaches a tobacco particle size that improves homogeneity. 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 (b), Klipfel ‘707 teaches a method of preparation of a sully for the production of a homogenized tobacco material in which the tobacco powder is suspended in a tank to form a slurry at a temperature of between about 10 °C and 40 °C (column 6, lines 28-35) so that the slurry has suitable properties (column 9, lines 2-23).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cool the binder, liquid carrier, and tobacco fines of modified Selke to the temperature of Klipfel ‘707. One would have been motivated to do so since Klipfel ‘707 teaches that controlling the temperature of a slurry used to form a reconstituted tobacco sheet ensures that the sheet has suitable properties. 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 4, Selke discloses that the binder is applied by spraying (column 5, lines 47-68, column 6, lines 1-9).
Regarding claim 5, Selke discloses that the sprayer is applied by a sprayer (column 5, lines 47-68, column 6, lines 1-9, figure 2, reference numeral 53), which is considered to form a pattern since it is located in a constant position relative to the web.
Regarding claim 6, modified Selke teaches all the claim limitations as set forth above. Gellatly teaches forming a reconstituted tobacco sheet using a slurry of tobacco particles and binder (column 2, lines 17-32) so that the tobacco particles binder can be mixed (column 5, lines 7-20). Modified Selke does not explicitly teach mixing the adhesive into the raw tobacco material.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to mix the adhesive and tobacco raw material prior to depositing. One would have been motivated to do so since Gellatly teaches that mixing binder into a tobacco slurry ensures proper mixing.
Regarding claim 7, Selke discloses that the drying is through a dryer that includes a vacuum (column 5, lines 47-68, column 6, lines 1-9), which is considered to be an equivalent of the claimed dryer unit as interpreted under 35 USC 112(f).
Regarding claim 8, Selke discloses that the stems are sprayed with water and then equilibrated in sealed containers (column 7, lines 61-68, column 8, lines 1-20), indicating that the spraying occurs prior to forming the web with the reinforcing sheet.
Regarding claim 9, Selke discloses that the reconstituted tobacco is shredded by a shredded for use (column 5, lines 47-68, column 6, lines 1-9).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Selke (US 4,542,755) in view of Gellatly (US 5,724,998) and Klipfel (US 10,321,707, hereafter referred to as Klipfel ‘707) as applied to claim 1 above, and further in view of Klipfel (US 2018/0242631, hereafter referred to as Klipfel ‘631).
Regarding claim 3, modified Selke teaches all the claim limitations as set forth above. Selke additionally discloses that the reconstituted tobacco incorporates cellulose fibers for strength enhancement (column 6, lines 26-42). Modified Selke does not explicitly teach the cellulose fibers being in the form of a fleece.
Klipfel ‘631 teaches homogenized tobacco material that contains a porous reinforcement sheet (abstract). Klipfel ‘631 additionally teaches that using a sheet rather than loose fibers allows tripling of strength without changing the composition of the overall homogenized tobacco material [0010].
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the fibers of modified Selke for the sheet of Klipfel ‘631. One would have been motivated to do so since Klipfel ‘631 teaches that reinforcing reconstituted tobacco using a sheet instead of loose fibers allows tripling of strength without changing the composition of the overall homogenized tobacco material.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Selke (US 4,542,755) in view of Gellatly (US 5,724,998) and Klipfel (US 10,321,707, hereafter referred to as Klipfel ‘707) as applied to claim 1 above, and further in view of Kim (US 2022/0295870).
Regarding claim 10, modified Selke teaches all the claim limitations as set forth above. Selke additionally discloses that the web includes cellulose fibers for strength enhancement (column 6, lines 26-42). Modified Selke does not explicitly teach the slurry of binder, tobacco fines, and liquid carrier having a viscosity within the claimed range.
Kim teaches a fragrance containing sheet for a smoking article [0007] that has a slurry viscosity of from about 100 cp to about 10,000 cp that has excellent fragrance retention properties in a cellulose based slurry [0062] that also contains a fragrance including tobacco [0063].
It would therefore have been obvious to one of ordinary skill in the art to combine the binder and tobacco solution of modified Selke with the viscosity of Kim. One would have been motivated to do so since Kim teaches a suitable viscosity for a tobacco material having good flavor retention. 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).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Selke (US 4,542,755) in view of Gellatly (US 5,724,998) and Klipfel (US 10,321,707, hereafter referred to as Klipfel ‘707) as applied to claim 1 above, and further in view of Zang (CN 106942783, machine translation relied upon).
Regarding claim 11, modified Selke discloses all the claim limitations as set forth above. Selke additionally discloses that the binder is applied by spraying (column 5, lines 47-68, column 6, lines 1-9). Modified Selke does not explicitly disclose a density of the slurry containing binder, tobacco fines, and liquid carrier.
Zang teaches a method for making reconstituted tobacco in which tobacco insoluble material is made into a paper substrate and then coated with a coating liquid (page 2, middle). The coating solution has a density of 1.18 to 1.12 g/cm3 (page 4, sixth paragraph) so that the coating solution can be sprayed (page 3, tenth paragraph).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the sprayed binder of modified Selke at the density of Zang. One would have been motivated to do so since Zang teaches a density suitable for spraying a reconstituted tobacco coating.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Selke (US 4,542,755) in view of Gellatly (US 5,724,998) and Klipfel (US 10,321,707, hereafter referred to as Klipfel ‘707) and Klipfel (US 2018/0242631, hereafter referred to as Klipfel ‘631) as applied to claim 3 above, and further in view of Nakanishi (US 6,761,175).
Regarding claim 16, modified Selke teaches all the claim limitations as set forth above. Klipfel ‘631 additionally teaches that the sheet is a cellulose sheet [0064]. Modified Selke does not explicitly teach the sheet being a nonwoven sheet.
Nakanishi teaches a tobacco having a carrier sheet made of nonwoven plant fibers (abstract) that is formed by a process that does not a lot of water to reduce drying cost and prevent deterioration (column 2, lines 33-38).
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the cellulose sheet of modified Selke from the nonwoven process of Nakanishi. One would have been motivated to do so since Nakanishi teaches that a nonwoven process reduces drying cost and prevents deterioration due to low water use.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Selke (US 4,542,755) in view of Gellatly (US 5,724,998) and Klipfel (US 10,321,707, hereafter referred to as Klipfel ‘707) as applied to claim 1 above, and further in view of Brown (US 1,871,151).
Regarding claim 20, modified Selke teaches all the claim limitations as set forth above. Selke additionally discloses that the drying can be accomplished by a wide variety of known drying techniques (column 7, lines 22-33). Modified Selke does not explicitly teach drying using heated rolls.
Brown teaches a method of making a smoking product (page 1, left column, lines 10-13) that uses steam heated rolls to artificially dry the product.
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the heated rolls of Brown to perform the drying of modified Selke. One would have been motivated to do so since Selke teaches that any known drying method can be used and Brown teaches rolls that artificially dry a smoking product.
Response to Arguments
Regarding the interpretation under 35 USC 112(f), applicant’s arguments have been fully considered but they are not persuasive. Applicant argues that the scope of the limitation interpreted under 35 USC 112(f) should not be limited to “a series of internally steam heated cylinders.” However, nowhere does the Office action state that claim scope is limited to that one feature. The Office action interpreted the limitation in accordance with the language of 35 USC 112(f), which includes equivalents of the structure disclosed in the specification. It is further noted that a heated cylinder would be considered an equivalent of the structure disclosed in applicant’s specification.
Regarding the rejections under 35 USC 103, applicant’s arguments have been fully considered but they are not persuasive. Applicant argues (a) that the range of Klipfel ‘707 does not overlap the claimed range of the liquid medium temperature being below 10 °C and (b) that the dependent claims are allowable due to dependence on an allowable claim.
Regarding (a), the ranges are considered to overlap since the range of Klipfel ‘707 is indicated as beginning at about 10 °C. This is considered to include some temperatures that do fall within applicant’s range, such as 9.9 °C, within the range of Klipfel ‘707. See MPEP § 2144.05 I. Furthermore, 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 (b), all examined claims, including the examined independent claims, are rejected as set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL E SPARKS whose telephone number is (571)270-1426. The examiner can normally be reached Monday-Friday, 9:00 am-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/RUSSELL E SPARKS/ Primary Examiner, Art Unit 1755
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