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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/9/2026 has been entered.
Status of the Claims
Claims 1, 3, 5, 6 and 9-10 are pending.
Claims 9 and 10 are withdrawn.
Claim 4 has been cancelled.
Claim 1 has been amended.
Response to Arguments
Applicant's arguments filed 6/9/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
The Examiner states that the nicotine content and the nitrate content are properties of the sheet that are a result of the process to make the sheet. Applicant respectfully traverses.
The combined process from Keritsis, Miyazaki and Brinkley is not identical or substantially identical to the claimed process.
The present specification discloses: "a sheet for a smoking article is manufactured in the present disclosure using the sheet after manufacturing it into a sheet using only the separated solid part without the step of adding the concentrated extract" (page 5, lines 9-11) (emphasis added.).
Also, the present specification discloses: "in step S4, a process such as adding a concentrated solution obtained by concentrating the liquid part separated in the step S1 is excluded, and the slurry is manufactured into a sheet as it is" (page 5, lines 26-28) (emphasis added.).
The present specification demonstrates that the claimed process achieves both nicotine AND nitrate reduction.
Examiner Response A:
The Examiner respectfully disagrees. The Applicant is arguing limitations from the specification which are not claimed. The Applicant argues that these limitations from the specification results in both nicotine AND nitrate reduction; however, these are not claimed limitations.
Since claim 1 states that the claimed process of claim 1 results in both nicotine AND nitrate reduction, then it follows that meeting the process claim limitations of claim 1 would also result in both nicotine AND nitrate reduction, otherwise the claim is most likely missing essential subject matter.
If the above claims from the specification are central to the nicotine AND nitrate reduction, then those limitations should be added to claim 1.
Applicant Argument B:
The Examiner considers that it would have been obvious to use the method of forming a sheet, suggested by Miyazaki, to form the sheet which is pulverized and further processed by Keritsis because the method of forming the sheet disclosed by Miyazaki results in a sheet with a low alkaloid content, particularly a low nicotine content (Miyazaki, page 3, lines 7-10).
However, the claimed invention is characterized in that a sheet is manufactured through a slurry-type process using only the solid part after removing the liquid part without re-adding the liquid part. Keritsis teaches that the pulverized ("particulated") sheet is mixed with a tobacco- parts slurry (col. 9, lines 53-54; col. 11, line 42), and this slurry that contains tobacco parts is formed into a sheet. That is, Keritsis relates to a process including mixing with a tobacco portion slurry. Miyazaki relates to a papermaking process for the purpose of removing water-soluble components. Accordingly, the two inventions are different in terms of sheet-forming mechanism and technical concept.
Thus, even if the teachings of Keritsis and Miyazaki were combined, the resulting process would not be identical or substantially identical to that of the claimed invention, and the sheet obtained would contain tobacco parts and would not meet the claimed nicotine content of 1.0% or less and a nitrate content of 0.1% or less.
Examiner Response B:
The Examiner respectfully disagrees. First, claim 1 states “preparing a slurry by mixing pulp with the pulverized sheet (S3)” however the claim does not state what the pulp is or is not. If the material of the pulp is central to the nicotine AND nitrate reduction, then that should be added to claim 1.
Furthermore, in response to applicant's argument that Keritsis and Miyazaki are different in terms of sheet-forming mechanism and technical concept, and it would not be obvious for one of ordinary skill in the art at the time of filing to have combined the two references, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant Argument C:
However, Keritsis, Miyazaki and Brinkley do not contain any disclosure whatsoever regarding the content or reduction of nicotine and nitrate, and thus it is unreasonable to conclude that a nitrate reduction effect would naturally result merely because the processes are allegedly similar.
In general, in the case of manufacturing a smoking article sheet through a slurry-type process as in Keritsis, in order to obtain reduction effects for nicotine or nitrate, the content of tobacco powder is reduced.
However, in such a case, not only is it impossible to drastically reduce the tobacco powder content, but also additional pulp must be added in proportion to the reduced tobacco powder content, thereby causing paper odor or deterioration of tobacco flavor.
In contrast, in the claimed invention, as in claim 1, after performing Steps S1 to S2, the smoking article sheet is manufactured through a slurry-type process (Steps S3 and S4 and a drying step), thereby sufficiently achieving nicotine and nitrate reduction effects without generating paper odor.
Since Miyazaki is formed through a papermaking-type process, there is no motivation at all to combine the slurry-type process of Keritsis with the papermaking-type process of Miyazaki.
Therefore, the nicotine and nitrate reduction effects serve as important distinguishing features of the claimed invention over the cited references.
Examiner Response C:
The Examiner respectfully disagrees. First, in response to applicant's argument that Miyazaki and Keritsis are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both are in the field of the inventor’s endeavor.
Furthermore, the courts have held that where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
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.
Claim(s) 1, 3, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keritsis (US 4341228) in view of Miyazaki (WO 2020239621) and further in view of Brinkley (US 5322076).
Regarding claims 1 and 3, Keritsis teaches a method for manufacturing a sheet for a smoking article (abstract), the method comprising the steps of: preparing a slurry by mixing pulp with a pulverized (“particulated”) sheet (col. 11, lines 40-42); and the slurry is formed into a sheet (col. 11, line 42) such as by hand-making them into sheets (col. 10, lines 27-29) or via a paper-making process (col. 9, lines 53-54). Keritsis does not expressly teach injecting the slurry to form a sheet. However, the slurry would have been injected at some point in the process of forming the sheet, such as when the slurry is transferred to a paper-making forming machine. In the alternative, it would have been obvious for one of ordinary skill at the time of filing to have injected the slurry to form a sheet because injecting is an effective means of moving slurry.
Keritsis does not expressly teach that the method of forming the sheet, which gets pulverized by Keritsis, comprises putting a tobacco material into an aqueous solvent, soaking and pressurizing it to separate a solid part and a liquid part; removing the liquid part, forming a sheet with the solid part, and then drying.
Miyazaki teaches putting a tobacco material, specifically tobacco dust (page 5, lines 23-26), into a water-based solution and then soaked (page 7, lines 6-10), and then subjecting the slurry to separation conditions to separate a solid part (“fibrous faction”) and a liquid part (“liquid faction”) (page 6, lines 1-5); forming a sheet with just the solid part and then drying (page 6, lines 23-26). It would have been obvious for one of ordinary skill in the art to use the method of forming a sheet, suggested by Miyazaki, to form the sheet which is pulverized and further processed by Keritsis because the method of forming the sheet disclosed by Miyazaki results in a sheet with a low alkaloid content, particularly a low nicotine content (Miyazaki, page 3, lines 7-10).
Modified Keritsis does not expressly teach that the separation conditions involve “pressurizing it”, however applying pressure to separate a liquid and a solid would have been an obvious choice for one of ordinary skill in the art at the time of filing to separate a liquid from a solid, with a reasonable expectation of success and predictable results.
Modified Keritsis does not expressly teach that the step S1 is performed by a method comprising the steps of: putting a tobacco material into an aqueous solvent, and heating it to 500C to 900C for 20 to 40 minutes; and separating the solid part and the liquid part by pressurizing the heated mixture after the heating.
Brinkley teaches providing a reconstituted tobacco material, preferably using a papermaking technique; and then using that reconstituted tobacco material to provide at least a portion of the cellulosic component of paper, which is manufactured using papermaking techniques, to make cigarettes (col. 1, lines 47-55). Brinkley teaches putting a tobacco material into an aqueous solvent (col. 4, lines 1-9), and heating it to 50 F- 175 F (10 C- 79.4 C) for less than about 60 minutes, specifically less than about 30 minutes (col. 4, lines 27-34); and separating the solid part and the liquid part by pressurizing the heated mixture after the heating (col. 4, lines 41-45). It would have been obvious for one of ordinary skill in the art at the time of filing to have incorporated these process steps of Brinkley as part of the steps of separating the solid part and the liquid part of modified Keritsis because Brinkley teaches that these steps adequately extract and separate the solid part from the liquid part.
Modified Keritsis does not expressly teach further comprising a step of drying the sheet after the step S4. Brinkley teaches providing a reconstituted tobacco material, preferably using a papermaking technique; and then using that reconstituted tobacco material to provide at least a portion of the cellulosic component of paper, which is manufactured using papermaking techniques, to make cigarettes (col. 1, lines 47-55). Brinkley teaches that the step after forming a sheet from the slurry is drying the sheet (col. 3, lines 45-50). It would have been obvious for one of ordinary skill in the art at the time of filing to have included the step of drying after forming the sheet from the slurry in modified Keritsis, as suggested by Brinkley, so that the sheet can be used in the manufacture of smoking articles (Brinkley, col. 3, lines 45-52).
Regarding the limitations, “wherein the sheet has a reduced specific component, and the specific component includes one or more selected from the group consisting of nicotine and nitrate”, “wherein the sheet for a smoking article has a nicotine content of 1.0% or less” and “wherein the sheet for a smoking article has a nitrate content of 0.1% or less,” these are properties of the sheet that are a result of the process to make the sheet. The courts have held that where the claimed and prior art products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claim 5, modified Keritsis teaches that tobacco dust is preferably less than about 60 mesh (0.250 mm) in size (Keritsis, col. 2, lines 61-66).
Regarding claim 6, modified Keritsis teaches a step of adding an aerosol- generating material (“humectant”) to the sheet for a smoking article to adjust sensory characteristics of the smoking article (Miyazaki, page 4, lines 21-25).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YANA B KRINKER whose telephone number is (571)270-7662. The examiner can normally be reached Monday, Wednesday, Thursday and Friday.
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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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