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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/14/2025 has been entered.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 24 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 24 contains the phrase: “exhibits color that is independent of lighting in which it is viewed”. The specification does not expressly disclose how a material can exhibit color that is independent of light in which it is viewed.
Claim 24 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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. Claim 24 contains the phrase: “the colored material exhibits a UV/Vis spectrum with increasing absorbance from 400mm to 700mm with a substantially straight line profile”. This feature appears to be contradicted with the disclosure [0015] [0016] (fig. 3A, 4A) because those graphs show increasing reflectance from 400mm to 700mm.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
Claim(s) 24-38 is/are rejected under 35 U.S.C. 102/103 as being anticipated by Atchley et al. (U.S Pub. No. 20120031416).
Regarding claim 24, Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113). In this case, Atchley discloses a colored material, comprising a fabric to which an extract from a tobacco material has been applied [0015] (tobacco extract naturally has a color therefore meeting the claimed natural colorant extracted from a tobacco material).
Regarding claim 25, Atchley discloses the colored material of claim 24, wherein the fabric is a woven textile [0039].
Regarding claim 26, Atchley discloses the fabric is a non-woven textile (Abstract) [0039].
Regarding claim 27, Atchley discloses the fabric comprises natural materials [0043].
Regarding claim 28, Atchley discloses the fabric comprises synthetic materials [0043].
Regarding claim 29, Atchley discloses the fabric comprises natural and synthetic materials [0043].
Regarding claim 30, Atchley discloses the fabric comprises cellulosic fibers [0043].
Regarding claim 31, Atchley discloses he colored material of claim 30, wherein the cellulosic fibers are cotton fibers [0006].
Claims 32-33, Atchley discloses the fabric comprises protein fibers; wherein the protein fibers are wool fibers and/or silk fibers [0119].
Regarding claim 34, Atchley discloses the fabric is associated with a tobacco product (Abstract).
Regarding claim 35, Atchley discloses the fabric comprises product packaging or cigarette paper [0006].
Regarding claim 36, Atchley discloses the fabric comprises a filter tow material, a snus pouch, or a component of an e-cigarette [0122].
Regarding claim 37, Atchley discloses the fabric comprises a snus pouch [0122].
Regarding claim 38, Atchley does not discloses adding a mordant (corresponding to the claimed no intentionally added mordant).
Claim(s) 24, 27-31, 35, 38 and 41 is/are rejected under 35 U.S.C. 102/103 as being anticipated by DeVall (U.S Pub. No. 20120272460).
Regarding claim 24, Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113). In this case, DeVall discloses a colored material, comprising a fabric to which a natural colorant extracted from a tobacco material has been applied [0018].
Regarding claim 27, DeVall discloses the fabric comprises natural materials [0015].
Regarding claim 28, DeVall discloses the fabric comprises synthetic materials [0015].
Regarding claim 29, DeVall discloses the fabric comprises natural and synthetic materials [0015].
Regarding claim 30, DeVall discloses the fabric comprises plant (corresponding to claimed cellulosic) fibers [0015] [0022].
Regarding claim 31, DeVall discloses he colored material of claim 30, wherein the cellulosic fibers are cotton fibers [0022].
Regarding claim 35, DeVall discloses the fabric comprises product packaging [0015].
Regarding claim 38, DeVall discloses the colored material comprising no intentionally added mordant [0018].
Regarding claim 41, DeVall discloses the colored material is permanently colored [0023]
Claim Rejections - 35 USC § 103
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.
Claim(s) 39, 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Atchley et al. (U.S Pub. No. 20120031416).
Regarding claim 39, Atchley discloses the extract can include nicotine and provide a desirable flavor profile; therefore it would have been obvious to one ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to the claimed weight nicotine as a desirable flavor profile.
Regarding claim 41, it would have been obvious to one of ordinary skill in the art that the colored material is permanently colored.
Claim(s) 39 and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over DeVall (U.S Pub. No. 20120272460).
Regarding claim 39, DeVall does not expressly disclose the present of nicotine, therefore the amount of nicotine would be within the claimed range.
Regarding claim 41, DeVall discloses the color material is permanently colored [0023].
Claim(s) 25-26, 32-34 and 36-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over DeVall (U.S Pub. No. 20120272460) in view of Atchley et al. (U.S Pub. No. 20120031416).
Regarding claim 25, DeVall does not expressly disclose the fabric is a woven textile Atchley discloses the fabric can be a woven textile [0039]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use woven technology disclosed by Atchley to make the fabric of DeVall.
Regarding claim 26, DeVall does not expressly disclose the fabric is a woven textile Atchley discloses the fabric can be a non-woven textile [0039]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use non-woven technology disclosed by Atchley to make the fabric of DeVall.
Claims 32-33, DeVall does not expressly disclose the fabric comprises silk fibers. Atchley discloses the fabric comprises protein fibers; wherein the protein fibers are wool fibers and/or silk fibers [0119]. Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to have the fabric of DeVall comprises silk fibers.
Regarding claim 34, Atchley discloses the fabric is associated with a tobacco product (Abstract). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made that the fabric of DeVall is capable of being associated with a tobacco product.
Regarding claims 36-37, Atchley discloses the fabric comprises a filter tow material, a snus pouch, or a component of an e-cigarette [0122]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made that the fabric of DeVall is capable of being a pouch for snus.
Response to Arguments
Applicant's arguments filed 8/14/2025 have been fully considered but they are not persuasive.
Applicant essentially argues that the feature: “exhibits color that is independent of lighting in which it is viewed” is described in the specification. As the Applicant pointed out that the colored material exhibits a UV/Vis spectrum dependent on the wavelength of the lighting (fig. 3A and 4A) which is directly contradicted with the above feature.
Conclusion
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/PHU H NGUYEN/ Examiner, Art Unit 1747