The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Election/Restrictions
Applicant’s election of group II (claims 20-33) and the election of the following species, (A) potato starch as the elected starch composition, (B) sucralose as the sweetener, (C) cohesiveness as the textural property, (D) gel as the product structure, and (E) flavorant as the additive in the replies filed on 2/11/2026 and 6/29/2026 is acknowledged. Merely asserting that there is no search burden does not constitute distinctly and specifically pointing out a supposed error. 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)).
Claims 35, 36, 40, 41, and 45, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse as noted above.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 20, 39, 42, and 43 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Strickland et al. (US 20060191548 A1).
Regarding claims 20, 39, and 43, Strickland et al. disclose a smokeless tobacco product containing tobacco with a specific starch material that imparts a specific textural property (i.e. cohesiveness). Strickland et al. state:
The formulation of Table 46.3 forms a composition that can be easily shaped by a consumer into a moist cohesive portion, e.g., by pressing a small amount of the mixture between the fingers; this portion is then conveniently and cleanly placed in the mouth. [0245]
This cohesive property is obtained by utilizing the adhesive characteristics of starch, modified starch, maltodextrin, dextrose or a combination of these or similar materials when they are added to tobacco in the presence of water. [246]
Regarding claim 42, the embodiment in table 46.2 contains 5 percent starch (i.e. at least about 1 percent).
Claim(s) 20, 37, 38, 39, 42, 43, and 44 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Strickland et al. (US 20060191548 A1). Please note, although this is the same reference as above, a different embodiment Strickland et al. is being used in this rejection. To prevent confusion, the rejections are being listed separately.
Regarding claims 20, 37, 38, 39, 42, and 44, , Strickland et al. disclose a smokeless tobacco product that is a film made of a gel material composed of 12.18% starch (B-792 (Grain Processing Corporation), 24.37% tobacco powder, 0.49% sweetener (sucralose solution), and 6.82% flavor (including cinnamon) (see table 11.1, example 11, and [0075]-[0079]. The product disintegrated in users mouth [0079]-[0081].
Regarding claim 43, the starch in example 11 would inherently provide a specific textural property including many of the properties listed because the effect of the ingredient cannot be separated from the ingredient itself and its effect would naturally and necessarily flow from its chemical and physical properties. For instance, the density of the product is a direct result of each and every ingredient including the starch.
Claim(s) 20, 34, 37, 38, 43, 44, and 46 is/are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Chan et al. (US 2005/0123502).
Regarding claims 20, 34, 37, 38, 43, 46 Chan et al. disclose a dissolvable oral tobacco product (i.e tobacco flavor or leaf, paragraph 0013) that includes a mixture of ingredients (i.e. mixed) that are “dissolved or suspended in a pharmaceutically or cosmetically acceptable (physiologically tolerable carrier),” and can be in the form of a pill, a lozenge, candy, (0050) that includes ingredients such as flavorants (claims 39 and 40), and sweeteners such as sucrose and sucralose (0021, 0025, 0065) and disintegrants such as potato starch (0022). The products orally dissolve [0045].
Regarding claim 43, disintegrants are interpreted as contributing to the fracturability of the product. Chan et al. expressly disclose that the composition should disintegrate, and that potato starch causes disintegration, and therefore potato starch causes the desired texture (i.e. the texture of disintegration or fracturability).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached on Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on 571-270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J FELTON/
Primary Examiner, Art Unit 1747
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