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
This Office Action is in response to Applicant’s amendments filed 04/29/2026.
Claims 1, 8 and 13-14 are pending and are subject to this Office Action.
Claim 1 is amended.
Claim 14 is newly added.
Claims 2-7 and 9-12 are cancelled.
Response to Arguments
Applicant’s arguments, see pages 4-6, filed 04/29/2026, with respect to the 112a rejection of claim 1 have been fully considered but they are not persuasive.
The Applicant alleges that support for the claimed first material content is provided in paragraph [0039] of the written description, and thus a rejection on the grounds of insufficient written description is flawed.
The Examiner disagrees.
The Examiner notes that the disclosure is considered to support the claimed range unless the Examiner has reason to doubt that the disclosure of the broader range describes the narrower range, i.e., the broader and narrower ranges are different inventions. In the instant case, the Applicant’s argument of unexpected results for the range of 30-33.1 wt% provides a reason to doubt that the disclosure of the broader range (0-50 wt% as described in [0039]) accurately describes the claimed range. That is, the specification does not describe the claimed range of 30-33.1 wt% as representing a critical range. Specifically, there is no disclosure and no exemplified embodiment of the specific range. Furthermore, the Applicant argues that the newly claimed range is different from the disclosed broader range by having unexpected results that were not disclosed. However, the non-disclosed unexpected results are thus considered supporting factors as to why the claim lacks written description.
Applicant’s arguments, see pages 6-9, filed 04/29/2026, with respect to the 103 rejection of claim 1 have been fully considered but they are not persuasive.
On pages 6-9, the Applicant argues that claim 1 as amended is not appropriately taught by the prior art of record. Specifically, the Applicant argues that an invention with the claimed first material content would display unexpected results that could not be derived from the prior art.
The Examiner disagrees.
Shi teaches that the first material may be present in an amount of approximately 25 wt%. It is interpreted that “approximately” may comprise values slightly above and below 25 wt%. Thus, the claimed range of 30-33.1% would overlap with range taught by Shi and would thus be prima facie obvious.
Additionally, disregarding this margin, Shi would still render obvious the claimed range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. In the immediate case, the amount taught by Shi is so close to the claimed range that prima facie one skilled in the art would have expected them to have the same properties. See MPEP § 2144.05 (I).
In the alternative rejection, Albino teaches that the tobacco material comprises 29 wt% of the first material ([0280]), and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
The Applicant attempts to rebut a prima facie case of obviousness by showing the criticality of the range. Specifically, the Applicant cites paragraphs [0102-0122] and Tables 3 and 5 of the specification in order to demonstrate that the claimed range of 30-33.1 wt% exhibits odor reduction and smoking quality retention. The Applicant argues that among tobacco materials containing 10, 20, 30, 40 and 50 wt% of the first material, Example 3, 30% low-tobacco composition, minimized the level of nitrogen compounds over the other Examples provided. Similarly, the Applicant argues that an article with 33.1 wt% or lower first material exhibits a statistically-derived first material amount for optimized tobacco smoke taste intensity.
However, this evidence is not commensurate in scope with the claimed range of 30-33.1 wt%. Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. As such, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. However, these examples do not provide support for either endpoint of the range of 30 wt% to 33.1 wt% first material.
The Examiner notes that the endpoint of 33.1% is merely a statistical derivation, and has not been tested. In the examples provided, compositions were tested at 20 wt% or 40 wt% first material to obtain subjective taste reports from users. The applicant has then taken a statistical average of the outcomes to yield the claimed endpoint. However, these results are not persuasive of criticality of 33.1 wt% first material, as the results are purely subjective and no testing has been performed on the exact value claimed. The Applicant has also not considered variation to the average (as inevitable with subjective testing) that would yield similar taste results, such as values higher or lower than 33.1%. Thus, the Applicant does not show sufficient evidence of the 33.1 wt% endpoint being significant.
Similarly, the Applicant has not considered that the claimed endpoint value of 30% may have some variation, such as values greater than 20% and lower than 40% that would also display unexpected results similar to the example having 30% first material. Thus, the Applicant has not provided evidence that 30% is the only composition that would express reduced nitrogen compounds.
Furthermore, the Applicant has not appropriately shown that the full range of 30-33.1 wt% would necessarily exhibit both the predicted reduction in nitrogen compounds or the predicted taste benefit.
Thus, the argument is not sufficient to prove unexpected results of the claimed range.
The following is a modified rejection based on Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 8 and 10-13 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim recites that “the first material is included in an amount of 30 wt% to 33.1 wt%” in line 9. The Applicant alleges that support for this limitation is provided in paragraph [0039] of the written description, which recites “a tobacco material may include low-nicotine tobacco leaves by about 50 wt% or less and may include low-nicotine tobacco leaves by about 10 wt% to 50 wt%, 10 wt% to 40 wt%, 20 wt% to 40 wt%, or 20 wt% to 30 wt%”. The written description further provides examples of 10 wt%, 20 wt%, 30 wt%, 40 wt% and 50 wt% first material (see Examples 1-5; Table 3).
This disclosure is considered to support the claimed range unless the Examiner has reason to doubt that the disclosure of the broader range describes the narrower range, i.e., the broader and narrower ranges are different inventions.
In the instant case, the Applicant’s argument of unexpected results for the range of 30-33.1 wt% provides a reason to doubt that the disclosure of the broader range (0-50 wt% as described in [0039]) accurately describes the claimed range. That is, the specification does not describe the claimed range of 30-33.1 wt% as representing a critical range.
Furthermore, as provided in the arguments dated 04/29/2026, see pages 6-8, the Applicant argues that the claimed range of 30-33.1% displays unexpected results and represents a critical range at which nitrogen-containing compounds are minimized and user taste is maintained. This argument brings into question whether the broader range described by the specification (0-50 wt%) actually describes the narrower range, which is stated to have properties not possessed by the broader range. The non-disclosed unexpected results are thus considered supporting factors as to why the claim lacks written description. Thus, there is reason to believe that the claimed range comprises new matter, since the newly claimed range has properties unique from the originally disclosed range.
Furthermore, there is no disclosure and no exemplified embodiment of the specific range. The Examiner notes that the endpoint of 33.1% is merely a statistical derivation, and has not been tested. In the examples provided, compositions were tested at 20 wt% or 40 wt% first material to obtain subjective taste reports from users. The applicant has then taken a statistical average of the outcomes to yield the claimed endpoint. However, these results are not persuasive of criticality of 33.1 wt% first material, as the results are purely subjective and no testing has been performed on the exact value claimed. The Applicant has also not considered variation to the average (as inevitable with subjective testing) that would yield similar taste results, such as values higher or lower than 33.1%. Thus, the Applicant does not show sufficient evidence of the 33.1 wt% endpoint being significant.
Similarly, the Applicant has not considered that the claimed endpoint value of 30% may have some variation, such as values greater than 20% and lower than 40% that would also display unexpected results similar to the example having 30% first material. Thus, the Applicant has not provided evidence that 30% is the only composition that would express reduced nitrogen compounds.
Furthermore, the Applicant has not appropriately shown that the full range of 30-33.1 wt% would necessarily exhibit both the predicted reduction in nitrogen compounds or the predicted taste benefit.
Claims 8 and 13-14 are rejected by virtue of their dependency on claim 1.
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 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 is rejected under 35 U.S.C. 103 as being unpatentable over Shi (US 20050000531 A1), or in the alternative over Shi in view of Albino et al. (US 20060157072 A1).
Regarding claim 1, Shi teaches a smoking article (smoking composition; [0009]) comprising:
a smoking material portion (smokable material) which includes a tobacco material ([0175]);
and a filter portion (filter; [0140]),
wherein the tobacco material includes
a first material (low nicotine tobacco) formed by processing tobacco leaves whose nicotine content is 0.2 wt% or lower ([0180] teaches that low nicotine tobacco may have a nicotine content of about 0.1 wt%, 0.05 wt or less %, which anticipates the claimed range. The Examiner notes that Shi teaches that the tobacco material may be in the form of cut filler obtained from tobacco plants ([0180], [0182]). It is expected that cut filler is made from tobacco leaves).
and a second material formed by processing other tobacco leaves whose nicotine content is 1.0 wt% or higher ([0185] teaches that the tobacco material includes a second material (conventional tobacco). [0179] teaches that the second material may be formed by processing tobacco with a nicotine content of 2.0 wt% or higher, which anticipates the claimed range. The Examiner notes that Shi teaches that the tobacco material may be in the form of cut filler obtained from tobacco plants ([0179], [0182]). It is expected that cut filler is made from tobacco leaves),
and wherein the tobacco material includes 30 wt% to 33.1 wt% of the first material ([0185] teaches that the tobacco material includes approximately 25% of the first material, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. [0184-0186] further teaches that the first material content may be adjusted by the user).
In the alternative, Shi does not explicitly teach that the tobacco material includes 30 wt% to 33.1 wt% of the first material.
Albino, directed to a smoking article comprising a smoking material portion ([0007], [0023]) which includes a tobacco material wherein the tobacco material includes a first material (low nicotine tobacco; [0028]) formed by processing tobacco leaves whose nicotine content is 0.2 wt% or lower ([0023], [0025], [0277-0278]) and a second material (conventional tobacco; [0028]) formed by processing second tobacco leaves whose nicotine content is 1.0 wt% or higher ([0277-0278]), teaches that the tobacco material comprises 30 wt% to 33.1 wt% of the first material ([0280] teaches 29 wt%, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Shi by using a tobacco material containing 30-33.1 wt% of the first material as taught by Albino because both Shi and Albino are directed to smoking articles comprising a first and a second tobacco material, Albino teaches a known composition/amount of the first material, and this involves substituting one alternative composition for another to yield predictable results.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Shi and Albino as applied to claim 1 above, and further in view of Gonterman et al. (US 20060021624 A1) and Seo et al. (US 20150136159 A1).
Regarding claim 8, Shi teaches a filter wrapper that wraps around the filter portion comprising a plug wrap and a tipping paper applied on an outer surface of the plug wrap ([0196-0197]).
Shi does not explicitly teach that filter wrapper comprises (I) a flavoring sheet including a sheet-forming agent and a flavoring or (II) a smell-reducing material that is applied on an outer surface of the flavoring sheet.
Gonterman, directed to a smoking article (smoking article 10; Fig. 1; [0025]) comprising a smoking material portion (rod 12; [0025]) which includes tobacco material and a filter portion (filter 14) with a filter wrapper including a plug wrap (plug wrap 13; [0025]) and a tipping paper (tipping paper 18; [0025]), teaches that a plug wrap may comprise a sheet-forming agent (such as CMC) and a flavoring ([0014], [0026]). Gonterman teaches that a flavored plug wrap is efficient to produce and provides desirable flavor to the use.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Shi by making the plug wrap of a sheet-forming agent and a flavoring as taught by Gonterman because both Shi and Gonterman are directed to smoking articles comprising plug wraps, Gonterman teaches that a flavored plug wrap is an efficient way to deliver flavor to the user, and this involves using a known technique to improve a similar smoking article in the same way.
Seo, directed to a filter portion (cigarette filter 110; Fig. 1; [0030]) for a smoking article with a filter wrapper including a plug wrap (filter wrapping paper 130; [0130]) and a tipping paper (tipping paper 150; [0031]), teaches that the tipping paper may comprise a smell-reducing material to reduce any lingering smell on a user’s hand ([0032]).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Shi by making the tipping paper from a smell-reducing material as taught by Seo because Shi is directed to a smoking article comprising a filter portion with a tipping paper and Seo is directed to a smoking article filter portion with a tipping paper, Seo teaches that a tipping paper may comprise a smell-reducing material to reduce the smell on a user’s hands, and this involves using a known technique to improve a similar product in the same way.
As such, it would be expected that modified Shi would comprise a filter wrapper that wraps around the filter portion, wherein a flavoring sheet including a sheet-forming agent and a flavoring is applied to at least a partial area of the filter wrapper, and a smell-reducing material is applied on an outer surface of the flavoring sheet.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Shi and Albino as applied to claim 1 above, and further in view of Garber (US 2331830 A).
Regarding claim 13, Shi teaches that the smoking material portion may include additives.
Shi does not explicitly teach that the smoking material portion includes a wetting agent.
Garber, directed to tobacco products such as cigarettes (col. 1, lines 1-17), teaches that it is important to maintain proper moisture conditions of tobacco. Garber further teaches that glycerin may be added to tobacco to control the desired moisture (wetting) (col. 1, lines 18-30).
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Shi by adding a wetting agent such as glycerin to the smokable material portion as taught by Garber because both Shi and Garber are directed to smoking articles comprising smoking materials, Garber teaches that a wetting agent additive helps to control the desired moisture of a tobacco material, and this involves applying a known teaching to a similar product to yield predictable results.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Shi and Albino as applied to claim 1 above, and further in view of Dube et al. (US 20120152265 A1).
Regarding claim 14, Shi teaches that the smoking material portion may include additives.
Shi does not explicitly teach that the smoking material portion includes a wetting agent.
Dube, directed to a smoking article comprising a tobacco material ([0054]), teaches that additives such as a propylene glycol humectants may be added to the tobacco material ([0062]). Humectants are considered wetting agents, as they control the desired moisture.
Therefore, before the effective filing date of the claimed invention, it would be obvious for one having ordinary skill in the art to modify Shi by adding a humectant such as propylene glycol to the smokable material portion as taught by Dube because both Shi and Dube are directed to smoking articles comprising smoking materials, Dube teaches that a humectant additive helps to control the desired moisture of a tobacco material, and this involves applying a known teaching to a similar product to yield predictable results.
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 Charlotte Davison whose telephone number is (703)756-5484. The examiner can normally be reached M-F 8:00AM-5:00PM.
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/C.D./Examiner, Art Unit 1755 /PHILIP Y LOUIE/Supervisory Patent Examiner, Art Unit 1755
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