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 .
Status of the Claims
Claims 1, 3-6, 9-10 are pending.
Claims 9 and 10 are withdrawn.
Claims 2, 7 and 8 have been cancelled.
Claims 1 and 6 have been amended.
Response to Arguments
Applicant's arguments filed 1/14/2026 have been fully considered but they are not persuasive.
Applicant Argument A:
Keritsis teaches a method for employing tobacco dust in a paper-making process for the preparation of reconstituted tobacco, comprising admixing tobacco dust with a bonding material to form a mixture, treating the mixture to form agglomerated particles, admixing the agglomerated particles with a tobacco-parts slurry and then forming the slurry into a sheet by means of a paper-making process, drying and then shredding the resultant reconstituted tobacco sheet (abstract; col. 2, lines 22-30).
Miyazaki teaches a reconstituted tobacco product having an alkaloid content, in particular a nicotine content, lower than 3 % based on dry weight, which is obtained by a method, comprising the steps of (a) selecting tobacco materials from tobacco by-products such as tobacco leaf scraps, tobacco stems and stalks, tobacco dust and fines created during tobacco processing, and tobacco leaf prime lamina strip; (b) slurry-tobacco pulping the tobacco materials in a water- based solution, thereby producing a pulp having a liquid fraction and a fibrous fraction, wherein the liquid fraction contains water-soluble materials comprising alkaloid content extracted from the tobacco materials; (c) removing said water-soluble materials from the pulp by removing the liquid fraction; (d) refining the tobacco pulp without water-soluble materials and forming a sheet with said tobacco pulp without water-soluble materials; (e) drying the tobacco pulp without water-soluble materials to form a reconstituted tobacco product (abstract; page 3, lines 11-25).
However, Keritsis's invention lies in employing tobacco dust in a paper-making process for the preparation of reconstituted tobacco, comprising admixing tobacco dust with a bonding material to form a mixture, treating the mixture to form agglomerated particles.
Since the sheet (reconstituted tobacco product) produced by Miyazaki is not tobacco dust, it is not clear how such a combination would work and one of ordinary skill in the art would not have been motivated to combine the teachings of Keritsis and Miyazaki.
Examiner Response A:
The Examiner respectfully disagrees. Keritsis teaches that a bonded tobacco dust sheet is pulverized (“particulated”) and then mixed with pulp to form a slurry, that is then made into a sheet (col. 11, lines 40-42). Keritsis does not teach the method of forming the bonded tobacco dust sheet that is pulverized.
Miyazaki teaches forming a reconstituted tobacco sheet (page 6, lines 23-26) from various tobacco materials, including tobacco dust (page 5, lines 23-26). Thus, the sheet formed by Miyazaki is also formed from tobacco dust.
Applicant Argument B:
Through this method, specific components such as nicotine and/or nitrate are reduced. More specifically, it is possible to achieve that, in the manufactured sheet for a smoking article, the nicotine content is 1.0% or less while, at the same time, the nitrate content is 0.1 % or less.
In contrast, Miyazaki merely mentions that the nicotine content may be 1% or less, and does not disclose any reduction of specific components such as nitrate at all.
Examiner Response B:
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01 I and II.
Applicant Argument C:
Accordingly, in order to reduce both the nicotine content and the nitrate content as described above, the process of pressurizing an aqueous solvent containing a tobacco material to separate a solid part and a liquid part is essential. However, the reconstituted tobacco product disclosed in Miyazaki merely teaches that the nicotine content may be 1 % or less, without including such a process.
Examiner Response C:
The Examiner respectfully disagrees. First, the rejection is based on the combined teachings of Keritsis, Miyazaki and Brinkley. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Second, the combined teachings of Keritsis, Miyazaki and Brinkley teach all of the instantly claimed process steps.
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 and 3-6 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.
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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See MPEP 2112.01 I and II.
Regarding claim 4, 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 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
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 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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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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YANA B. KRINKER
Examiner
Art Unit 1755
/YANA B KRINKER/Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755